700 | Omnilex

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OCR transcription for search; preserved printed pages are authoritative

# Chapter 700 Examination of Applications

701
Statutory Authority for Examination

702
Requisites of the Application
702.01
Obviously Informal Cases

703
"General Information Concerning Patents"

704
Search

705
Patentability Reports

705.01
Instructions re Patentability Reports

705.01 (a)
Nature of P. R., Its Use and Disposal

705.01 (b)
Sequence of Examination

705.01(c)
Counting and Recording P. R.'s

705.01 (d)
Duplicate Prints of Drawings

705.01 (e)
Limitation as to Use

705.01 (f)
Interviews With Applicants

706
Rejection of Claims

706.01
Contrasted With Objections

706.02
Rejection on Prior Art

706.02 (a)
Establishing "Well Known" Prior Art

706.03
Rejections Not Based on Prior Art

706.03 (a)
Nonstatutory Subject Matter

706.03 (b)
Barred by Atomic Energy Act

706.03 (c)
Functional

706.03 (d)
Vague and Indefinite

706.03 (e)
Product by Process

706.03 (f)
Incomplete

706.03 (g)
Prolix

706.03 (h)
Nonstatutory Claim

706.03 (i)
Aggregation

706.03 (j)
Old Combination

706.03 (k)

706.03(1)

Duplicate Claims ; Double Patenting
Mutiplicity
Nonelected Inventions

706.03 (m)

706.03 (n)

Correspondence of Claim and Disclosure

706.03 (0)

New Matter

706.03 (p)
No Utility

706.03 (q)
Obvious Method

706.03 (r)
Mere Function of Machine

706.03 (s)

Statutory Bar

706.03(t)

Other Assigned Application

706.03 (u)

Disclaimer

706.03 (v)
After Interference or Public Use Proceed-
ing

706.03 (w)
Res Judicata

706.03 (x)
Reissue

706.03(y)

Improper Markush Group

706.03 (z)
Undue Breadth

706.04
Rejection of Previously Allowed Claim

706.05

Rejection After Allowance of Application

706.06

Rejection of Claims Copied from Patent

706.07
Final Rejection

706.07(a)
When Proper on Second Action

706.07 (b)
When Proper on First Action

706.07 (c)
Premature

706.07 (d)
Withdrawal of Premature

706.07 (e) Withdrawal of Final Rejection, General
707
Examiner's Letter or Action

707.01
Primary Examiner Indicates Action for New
Assistant

707.02 (a)
Cases Up for Third Action and Five-Year
Cases

707.04
Initial Sentence
707.05
Citation of References

707.05 (a)
Copies of Cited References Provided by
Reference Order Section

707.05 (b)
References Cited By Applicant

707.05(c)
Order of Listing

707.05 (d)
Reference Cited in Subsequent Actions

707.05(e)
Data Used in Citing References

707.05 (f)
Effective Dates of Declassified Printed
Matter

707.05(g)
Incorrect Citation of References

707.06
Citation of Decisions, Orders, Memorandums
and Notices

707.07
Completeness and Clarity of Examiner's Action

707.07 (a)
Complete Action on Formal Matters

707.07 (b)
Requiring New Oath

707.07 (c)
Draftsman's Requirement

707.07 (d)
Language To Be Used in Rejecting Claims
Note All Outstanding Requirements

707.07 (e)

707.07 (f)
Answer All Material Traversed

707.07 (g)
Piecemeal Examination

707.07 (h)
Notify of Inaccuracies in Amendment

707.07 (i)
Each Claim To Be Mentioned in Each
Letter

707.07 (j)
State When Claims Are Allowable
707.07 (k)
Numbering Paragraphs

707.08
Reviewing and Initialing by Assistant
Examiner

707.09
Signing by Primary or Other Authorized
Examiner

707.10
Entry

707.11

Date

707.12
Mailing

707.13
Returned Office Action

708
Order of Examination

708.01
List of Special Cases

708.02
Petition to Make Special

708.03
Examiner Tenders His Resignation

709
Suspension of Action

709.01
Overlapping Applications by Same Applicant
or owned by Same Assignee

710
Period for Response

710.01
Statutory Period

710.01 (a)
Statutory Period : How Computed

# MANUAL OF PATENT EXAMINING PROCEDURE

710.02
Shortened Statutory Period and Time Limit
Actions

710.02 (b)
Situations in Which Used : Shortened Stat
utory Period

710.02 (c)
Situations in Which Used: Time Limit
Actions

710.02 (d)
Differences Between Shortened Statutory
and Time Limit Periods

7.10.02 (e)
Extension of Time

710.04
Two Periods Running

710.04 (a)
Copying Patent Claims

710.05
Period Ending on Saturday, Sunday or Holi-
đây

710.06
Miscellaneous Factors Determining Date

711
Abandonment

711.01

Express or Formal Abandonment

711.02
Failure to Take Required Action During Statu-
tory Period

711.02(a)
Insufficiency of Response

711.02 (b)
Special Situations Involving Abandonment

711.02 (c)
Termination of Proceedings

711.03
Reconsideration of Holding of Abandonment ;
Revival

711.03 (a)
Holding Based on Insufficiency of Response
711.03 (b)
Holding Based on Failure to Respond With-
in Period

711.03 (c)
Petitions Relating to Holding of Abandon-
ment

711.03 (d)
Examiner's Statement on Petition To Set
Aside Examiner's Holding

711.04
Disposition of Abandoned Applications

711.04 (a)
Pulling and Forwarding

711.04 (b)
Ordering Abandoned Files

711.05
Letter of Abandonment Received After Appli-
cation is Allowed

711.06
Abstracts, Abbreviatures and Defensive Pub-
lications

711.06 (a)
Citation and Use of Abstracts, Abbrevia-
tures and Defensive Publications as Ref-
erences

712
Abandonment for Failure to Pay Issue Fee

713
Interviews

713.01
General Policy, How Conducted

713.02
Interviews Prior to First Official Action

713.03
Interviews for "Sounding Out" Examiner Not
Permitted

713.04
Substance of Interview Must Be Made of
Record

713.05
Interviews Prohibited or Granted, Special
Situations

713.06
No Inter Partes Questions Discussed Ex Parte

713.07
Exposure of Other Cases

713.08
Demonstration, Exhibits, Models

713.09
Finally Rejected Application

713.10
Interview Preceding Filing Amendment Under
Rule 312

714
Amendments, Applicant's Actions

714.01
Signatures to Amendments

714.01 (a)
Unsigned or Improperly Signed Amend-
ment

714.01 (c)
Signed by Attorney Not of Record
714.01 (d)
Amendment Signed by Applicant But Not
by Attorney of Record

714.02
Must Be Fully Responsive

714.03
Amendments Not Fully Responsive, Action to
Be Taken

714.04
Claims Presented in Amendment with No At-
tempt to Point Out Patentable Novelty

714.05
Examiner Should Immediately Inspect

714.06
Amendments Sent to Wrong Group

714.07
Amendments Not in Permanent Ink

714.08
Telegraphic Amendment

714.09
Amendments Before First Office Action

714.10
Claims Added in Excess of Filing Fee

714.11
Amendment Filed During Interference Pro-
ceedings

714.12
Amendments After Final Rejection or Action
Amendments After Final Rejection or Action,
Procedure Followed

714.13

714.14

Amendments After Allowance of All Claims

714.15
Amendment Received in Examining Group
After Mailing of Notice of Allowance

714.16
Amendment After Notice of Allowance, Rule
312

714.16 (a)
Copied Patent Claims

714.16 (b)
Filed with a Motion Under Rule 231

714.16 (c)
Additional Claims

714.16 (d)
Handling

714.16(e)
Entry in Part

714.17
Amendment Filed After the Period for Re-
sponse Has Expired

714.18
Entry of Amendments

714.19
List of Amendments, Entry Denied

714.20
List of Amendments Entered in Part

714.21
Amendments Inadvertently Entered, No Legal
Effect

714.22
Entry of Amendments, Directions for

714.23
Entry of Amendments, Directions for, Defec-
tive

714.24
Amendment of Amendment

714.25
Discourtesy of Applicant or Attorney

715
Swearing Back of Reference-Affidavit or
Declaration Under Rule 131

715.01
Reference Claims Foreign Filing Date

715.01 (a)
Reference a Joint Patent to Applicant and
Another

715.01 (b)
Reference and Application have Common
Assignee

715.01 (c)
Reference is Publication of Applicant's
Own Invention

715.02
General Rule as to Generic Claims

715.03
Practice Relative to Chemical Cases

715.04
Who May Make Affidavit or Declaration

715.05
Patent Claiming Same Invention

715.07
Facts and Documentary Evidence

715.07 (a)
Diligence

715.07 (b)
Interference Testimony Sometimes Used

715.07(c) Acts Relied Upon Must Have Been Car-
ried Out in This Country

715.07 (d) Disposition of Exhibits
715.08 Passed Upon By Primary Examiner
715.09 Seasonable Presentation

716 Affidavits or Declarations Traversing Rejections,
Rule 132
717 File Wrapper

717.01 Papers in File Wrapper

717.01 (a) Arrangement of Papers in File Wrapper
717.01 (b) Prints

717.02 Date Entered on File Wrapper

717.02 (b) Name or Residence of Inventor or Title
Changed
717.03 Classification During Examination

717.04 Index of Claims

717.05 Field of Search

717.06 Foreign Filing Dates

717.07 Related Applications

720 Public Use Proceedings

720.01 Preliminary Handling

720.02 Examiner Determination of Prima Facie
Showing

720.03 Preliminary Hearing

720.04 Public Use Proceeding Testimony

720.05 Final Decision

721 Fraud on the Patent and Trademark Office

721.01 Examination of Patent Applications Having
an Issue of Fraud

## 701 Statutory Authority for Examina- tion [R-31]

35 U.S.C. 131. The Commissioner shall cause an ex-
amination to be made of the application and the alleged
new invention ; and if on such examination it appears
that the applicant is entitled to a patent under the law,
the Commissioner shall issue a patent therefor.

The main conditions precedent to the grant
of a patent to an applicant are set forth in
35 U.S.C. 101, 102, 103.

35 U.S.C. 101. Inventions patentable. Whoever in-
vents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent there-
for, subject to the conditions and requirements of this
title.

35 U.S.C. 100. Definitions. When used in this title
unless the context otherwise indicates --

(a) The term "invention" means invention or
discovery.

(b) The term "process" means process, art or method,
and includes a new use of a known process, machine,
manufacture, composition of matter, or material.

(d) The word "patentee" includes not only the
patentee to whom the patent was issued but also the
successors in title to the patentee.

## 702 Requisites of the Application [R-41]

When a new application is assigned in the
examining group, the examiner should review
the contents of the application to determine if
the application meets the requirements of 35
U.S.C. 111. Any matters affecting the filing date
of the application, such as lack of an original
signature or lack of claims should be checked
before the application is placed in the storage
racks to a wait the first action.

The examiner should be careful to see that
the application meets all the requisites set
forth in chapter 600 both as to formal matters
and as to the completeness and clarity of the
disclosure. If all of the requisites are not
met, applicant may be called upon for neces-
sary amendments. Such amendments, how-
ever, must not include new matter.

## 702.01 Obviously Informal Cases [R-43]

When an application is reached for its first
action and it is then discovered to be imprac-
tical to give a complete action on the merits
because of an informal or insufficient disclosure,
the following procedure may be followed :

(1) A reasonable search should be made of the
invention so far as it can be understood from the
disclosure, objects of invention and claims and
any apparently pertinent art cited;

(2) Informalities noted by the Application
Division and deficiencies in the drawing should
be pointed out by means of attachments to the
examiner's letter (see § 707.07(a)),

(3) A requirement should be made that the
specification be revised to conform to idiomatic
English and United States practice;

(4) The claims should be rejected as failing
to define the invention in the manner required
by 35 U.S.C. 112 if they are informal. A blanket
rejection is usually sufficient.

The examiner should not attempt to point
out the specific points of informality in the
specification and claims. The burden is on the
applicant to revise the application to render
it in proper form for a complete examination.

It is obviously to applicant's advantage to file
the application with an adequate disclosure and
with claims which conform to the U.S. Patent
and Trademark Office usages and requirements.
This should be done whenever possible. If, how-
ever, due to the pressure of a Convention dead-
line or other reasons, this is not possible, appli-
cants are urged to submit promptly, preferably
within three months after filing, a preliminary
amendment which corrects the obvious infor-
malities. The informalities should be corrected

to the extent that the disclosure is readily un-
derstood and the claims to be initially examined
are in proper form, particularly as to depend-
ency, and otherwise clearly define the invention.
"New matter" must be excluded from these
amendments since preliminary amendments do
not enjoy original disclosure status, § 608.04 (b).

Whenever, upon examination, it is found that
the terms or phrases of modes of characteriza-
tion used to describe the invention are not
sufficiently consonant with the art to which the
invention pertains, or with which it is most
nearly connected, to enable the examiner to
make the examination specified in rule 104, the
examiner should make a reasonable search of
the invention so far as it can be understood from
the disclosure. The action of the examiner
may be limited to a citation of what appears to
be the most pertinent prior art found and a
request that applicant correlate the terminology
of his specification with art-accepted termi-
nology before further action is made.

A suitable form for this action is as follows:

"A preliminary examination of this appli-
cation indicates that the following terminol-
ogy (or properties or units of test data, etc.)
. . . which appear (s) at page(s) . .. of the
specification is (are) so different from those
generally accepted in the art to which this
invention pertains that it is difficult or impos-
sible to make a reliable search.

Applicant is therefore requested to provide
a sufficient elucidation of these terms (or
properties or test data ) or correlation thereof
with art-accepted terminology so that a
proper comparison with the prior art can
be made.

A SHORTENED STATUTORY PE-
RIOD FOR RESPONSE TO THIS AC-
TION IS SET TO EXPIRE 30 DAYS
FROM THE DATE OF THIS LETTER."

For the procedure to be followed when only
the drawing is informal, see §§ 608.02(a) and
608.02(b).

## 703 "General Information Concerning Patents" [R-25]

The pamphlet "General Information Con-
cerning Patents" may be sent to an applicant
handling his own case when the examiner
deems it advisable.

## 704 Search [R-25]

After reading the specification and claims,
the examiner searches the prior art.

The subject of searching is more fully
treated in chapter 900. See §§ 904 through

904.02. The invention should be thoroughly
understood before a search is undertaken.
However, informal cases, or those which can
only be imperfectly understood when they
come up for action in their regular turn are
also given a search, in order to avoid piece-
meal prosecution.

### PREVIOUS EXAMINER'S SEARCH

When an examiner is assigned to act on an
application which has received one or more ac-
tions by some other examiner, full faith and
credit should be given to the search and action
of the previous examiner unless there is a clear
error in the previous action or knowledge of
other prior art. In general the second exam-
iner should not take an entirely new ap-
proach to the case or attempt to reorient the
point of view of the previous examiner, or
make a new search in the mere hope of finding
something. See § 717.05.

#### 705 Patentability Reports [R-25]

Where an application, properly assigned to
one examining group, is found to contain one
or more claims per se classifiable in one or more
other groups, which claims are not divisible
inter se or from the claims which govern classi-
fication of the application in the first group, the
application may be referred to the other group
or groups concerned for a report as to the pat-
entability of certain designated claims. This
report will be known as a Patentability Report
(P.R.) and will be signed by the primary ex-
aminer in the reporting group.

The report, if legibly written, need not be
typed.

Note that the Patentability Report practice
is suspended, except in extraordinary circum-
stances. See § 705.01 (e).

#### 705.01 Instructions re Patentability Reports [R-25]

When an application comes up for any ac-
tion and the primary examiners involved
agree that a Patentability Report is necessary,
the application will be forwarded to the proper
group with a memorandum attached, for in-
stance, "For Patentability Report from group

as to claims -------. "

#### 705.01 (a) Nature of P.R., Its Use and Disposal [R-25]

The primary examiner in the group from
which the Patentability Report is requested, if

# EXAMINATION OF APPLICATIONS

he approves the request, will direct the prepa-
ration of the Patentability Report. This Pat-
entability Report will be written or typed on a
memorandum form and will include the cita-
tion of all pertinent references and a complete
action on all claims involved. The field of
search covered should be endorsed on the file
wrapper by the examiner making the report.
When an examiner to whom a case has been
forwarded for a Patentability Report is of the

opinion that final action is in order as to the
referred claims, he should so state. The Pat-
entability Report when signed by the primary
examiner in the reporting group will be re-
turned to the group to which the application is
regularly assigned.

The examiner preparing the Patentability
Report will be entitled to receive an explana-
tion of the disclosure from the examiner to
whom the case is assigned to avoid duplication

of work. If the primary examiner in a re-
porting group is of the opinion that a Pat-
entability Report is not in order, he should so
advise the primary examiner in the forward-
ing group.

## DISAGREEMENT AS TO CLASSIFICATION

Conflict of opinion as to classification may
be referred to a patent classifier for decision.

If the primary examiner in the group
having jurisdiction of the case agrees with the
Patentability Report, he should incorporate the
substance thereof in his action, which action
will be complete as to all claims. The Pat-
entability Report in such a case will not be
given a paper number but will be allowed to
remain in the file until the case is finally dis-
posed of by allowance or abandonment, at
which time it should be removed.

### DISAGREEMENT ON PATENTABILITY REPORT

If the primary examiner does not agree
with the Patentability Report or any portion
thereof, he may consult with the primary ex-
aminer responsible for the report. If agree-
ment as to the resulting action cannot be
reached, the primary examiner having juris-
diction of the case need not rely on the Pat-
entability Report but may make his own action
on the referred claims, in which case the Pat-
entability Report should be removed from the
file.

#### APPEAL TAKEN

When an appeal is taken from the rejection
of claims, all of which are examinable in the
group preparing a Patentability Report, and
the application is otherwise allowable, formal
transfer of the case to said group should be
made for the purpose of appeal only. The
receiving group will take jurisdiction of the
application and prepare the examiner's
answer. At the time of allowance, the applica-
tion may be sent to issue by said group with its
classification determined by the controlling
claims remaining in the case.

### 705.01(b) Sequence of Examination [R-31]

In the event that the supervisory primary
examiners concerned in a P.R. case cannot
agree as to the order of examination by their
groups, the supervisory primary examiner
having jurisdiction of the case will direct that
a complete search be made of the art relevant to
his claims prior to referring the case to another

group for report. The group to which the case
is referred will be advised of the results of this
search.

If the supervisory primary examiners are of
the opinion that a different sequence of search
is expedient, the order of search should be corre-
spondingly modified.

### 705.01(c) Counting and Recording P.R.'s [R-23]

The forwarding of the application for a Pat-
entability Report is not to be treated as a
transfer by the forwarding group. When
the P.R. is completed and the application is
ready for return to the forwarding group,
it is not counted either as a receipt or action
by transfer. Credit, however, is given for the
time spent. See § 1705.

A box is provided on each file wrapper
headed "P.R. Group
" and the number of
the group making the P.R. is entered in
pencil.

The date status of the application in the
reporting group will be determined on the
basis of the dates in the group of original
jurisdiction. To insure orderly progress in the
reported dates, a timely reminder should be
furnished to the group making the P.R.

# 705.01(d) Duplicate Prints of Draw- ings [R-23]

In Patentability Report cases having draw-
ings, the examiner to whom the case is as-
signed will furnish to the group to which the
case is referred, prints of such sheets of the
drawings as are applicable, for interference
search purposes. That this has been done may
be indicated by a pencil notation on the file
wrapper.

When a case that has had Patentability Re-
port prosecution is passed for issue or becomes
abandoned, NOTIFICATION of this fact will
AT ONCE be given by the group having
jurisdiction of the case to each group that
submitted a P.R. The examiner of each such
reporting group will note the date of allow-
ance or abandonment on his duplicate set of
prints. At such time as these prints become
of no value to the reporting group, they may
be destroyed.

# 705.01 (e) Limitation as to Use [R- 31]

The above outlined Patentability Report
practice is not obligatory and should be re-

sorted to only where it will save total examiner
time or result in improved quality of action
due to specialized knowledge. A saving of to-
tal examiner time that is required to give a
complete examination of an application is of
primary importance. Patentability Report
practice is based on the proposition that when
plural, indivisible inventions are claimed, in
some instances either less time is required for
examination, or the results are of better qual-
ity, when specialists on each character of
claimed invention treat the claims directed to
their specialty. However, in many instances a
single examiner can give a complete examina-
tion of as good quality on all claims, and in
less total examiner time than would be con-
sumed by the use of the Patentability Report
practice.

Where claims are directed to the same char-
acter of invention but differ in scope only,
prosecution by Patentability Report is never
proper.

Exemplary situations where Patentability
Reports are ordinarily not proper are as fol-
lows:

(1) Where the claims are related as a manu-
facturing process and a product defined by the
process of manufacture. The examiner having
jurisdiction of the process can usually give a
complete, adequate examination in less total
examiner time than would be consumed by the
use of a Patentability Report.

(2) Where the claims are related as a prod-
uct and a process which involves merely the
fact that a product having certain characteris-
tics is made. The examiner having jurisdic-
tion of the product can usually make a com-
plete and adequate examination.

(3) Where the claims are related as a com-
bination distinguished solely by the charac-
teristics of a subcombination and such sub-
combination per se. The examiner having
jurisdiction of the subcombination can usually
make a complete and adequate examination.

Then there are situations where the examiner
seeking the report is sufficiently qualified to
search the art himself.

In view of these conditions which are ex-
pected to prevail for some time to come, it is
felt to be in the best interests of the Of-
fice to suspend the present Patentability Re-
port practice. Where it can be shown, however,
that a Patentability Report will save total
examiner time, exceptions may be permitted
with the approval of the group director of
the group to which the application is as-
signed. The "Approved" stamp should be im-
pressed on the memorandum requesting the
P.R.

# 705.01(f) Interviews With Applicants [R-23]

In situations where an interview is held on
an application in which a Patentability Report
has been adopted, the reporting group may be
called on for assistance at the interview when
it concerns claims treated by them. See §§ 713 to
713.10 regarding interviews in general.

# 706 Rejection of Claims [R-33]

Although this part of the Manual explains
the procedure in rejecting claims, the examiner
should never overlook the importance of his
role in allowing claims which properly define
the invention.

Rule 106. Rejection of claims. (a) If the invention
is not considered patentable, or not considered patenta-
ble as claimed, the claims, or those considered unpat-
entable will be rejected.

(b) In rejecting claims for want of novelty or for
obviousness, the examiner must cite the best ref-
erences at his command. When a reference is complex
or shows or describes inventions other than that claimed
by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence
of each reference, if not apparent, must be clearly ex-
plained and each rejected claim specified.

Patent examiners carry the responsibility of
making sure that the standard of patentability
enunciated by the Supreme Court and by the
Congress is applied in each and every case.
The Supreme Court in Graham v. John Deere,
148 USPQ 459, stated that,

"Under § 103, the scope and content of
the prior art are to be determined; differ-
ences between the prior art and the claims
at issue are to be ascertained; and the level
of ordinary skill in the pertinent art re-
solved. Against this background, the ob-
viousness or nonobviousness of the subject
matter is determined. Such secondary
considerations as commercial success, long
felt but unsolved needs, failure of others,
etc., might be utilized to give light to
the circumstances surrounding the origin
of the subject matter sought to be pat-
ented. As indicia of obviousness or non-
obviousness, these inquiries may have
relevancy.

"This is not to say, however, that there
will not be difficulties in applying the non-
obviousness test. What is obvious is not a
question upon which there is likely to be
uniformity of thought in every given fac-
tual context. The difficulties, however, are
comparable to those encountered daily by
the courts in such frames of reference as

negligence and scienter, and should be
amenable to a case-by-case development.
We believe that strict observance of the re-
quirements laid down here will result in
that uniformity and definitiveness which
Congress called for in the 1952 Act.

"While we have focused attention on the
appropriate standard to be applied by the
courts, it must be remembered that the pri-
mary responsibility for sifting out unpat-
entable material lies in the Patent Office.
To await litigation is-for all practical
purposes-to debilitate the patent system.
We have observed a notorious difference
between the standards applied by the Pat-
ent Office and by the courts. While many
reasons can be adduced to explain the dis-
crepancy, one may well be the free rein
often exercised by examiners in their use
of the concept of "invention." In this
connection we note that the Patent Office is
confronted with a most difficult task.

This is itself a compelling reason for the
Commissioner to strictly adhere to the 1952
Act as interpreted here. This would, we
believe, not only expedite disposition but
bring about a closer concurrence between
administrative and judicial precedent."

Accordingly, an application covering an in-
vention of doubtful patentability should not be
allowed, unless and until issues pertinent to
such doubt have been raised and overcome in
the course of examination and prosecution, since
otherwise the resultant patent would not justify
the statutory presumption of validity (35
U.S.C. 282), nor would it "strictly adhere" to
the requirements laid down by Congress in the
1952 Act as interpreted by the Supreme Court.

The standards of patentability applied in the
examination of claims must be the same
throughout the Office. In every art, whether it
be considered "complex," "newly developed,"
"crowded," or "competitive," all of the require-
ments for patentability (e.g., novelty, useful-
ness and unobviousness, as provided in 35 U.S.C.
101, 102, and 103) must be met before a claim is
allowed. The mere fact that a claim recites in
detail all of the features of an invention (i.e., is
a "picture" claim) is never, in itself, justifica-
tion for the allowance of such a claim.

When an application discloses patentable
subject matter and it is apparent from the
claims and the applicant's arguments that the
claims are intended to be directed to such pat-
entable subject matter, but the claims in their
present form cannot be allowed because of de-
fects in form or omission of a limitation, the
examiner should not stop with a bare objec-
tion or rejection of the claims. The exam-
iner's action should be constructive in nature

and when possible he should offer a definite
suggestion for correction.

If the examiner is satisfied after the search
has been completed that patentable subject
matter has been disclosed and the record indi-
cates that the applicant intends to claim such
subject matter, he may note in the Office action
that certain aspects or features of the patenta-
ble invention have not been claimed and that
if properly claimed such claims may be given
favorable consideration.

Rule 112. Reexamination and reconsideration. After
response by applicant (rule 111) the application will
be reexamined and reconsidered, and the applicant will
be notified if claims are rejected, or objections or re-
quirements made, in the same manner as after the first
examination. Applicant may respond to such Office ac-
tion, in the same manner provided in rule 111, with or
without amendment, but any amendments after the
second Office action must ordinarily be restricted to
the rejection or to the objections or requirements made,
and the application will be again considered, and so on
repeatedly, unless the examiner has indicated that the
action is final.

# 706.01 Contrasted With Objection [R-23]

The refusal to grant claims because the sub-
ject matter as claimed is considered unpatenta-
ble is called a "rejection." The term "rejected"
must be applied to such claims in the exam-
iner's letter. If the form of the claim (as dis-
tinguished from its substance) is improper, an
"objection" is made. The practical difference
between a rejection and an objection is that a
rejection, involving the merits of the claim, is
subject to review by the Board of Appeals,
while an objection, if persisted in, may be
reviewed only by way of petition to the Com-
missioner.

An example of a matter of form as to which
objection is made is dependency of a claim on a
rejected claim, if the dependent claim is other-
wise allowable. See § 608.01 (n).

# 706.02 Rejection on Prior Art [R- 31]

35 U.S.C. 102. Conditions for patentability; novelty
and loss of right to patent. A person shall be entitled
to a patent unless-

(a) the invention was known or used by others
in this country, or patented or described in a
printed publication in this or a foreign country,
before the invention thereof by the applicant for
patent, or

(b) the invention was patented or described in a
printed publication in this or a foreign country or

in public use or on sale in this country, more than
one year prior to the date of the application for
patent in the United States, or

(d) the invention was first patented or caused
to be patented by the applicant or his legal repre-
sentatives or assigns in a foreign country prior
to the date of the application for patent in this
country on an application filed more than twelve
months before the filing of the application in the
United States, or

(e) the invention was described in a patent
granted on an application for patent by another
filed in the United States before the invention
thereof by the applicant for patent, or

(f) he did not himself invent the subject matter
sought to be patented, or

(g) before the applicant's invention thereof the
invention was made in this country by another
who had not abandoned, suppressed, or concealed
it. In determining priority of invention there shall
be considered not only the respective dates of
conception and reduction to practice of the inven-
tion, but also the reasonable diligence of one who
was first to conceive and last to reduce to practice,
from a time prior to conception by the other.

35 U.S.C. 103. Conditions for patentability; non-
obvious subject matter. A patent may not be obtained
though the invention is not identically disclosed or
described as set forth in section 102 of this title, if
the differences between the subject matter sought to
be patented and the prior art are such that the
subject matter as a whole would have been obvious
at the time the invention was made to a person
having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived
by the manner in which the invention was made.

By far the most frequent ground of rejection
is on the ground of unpatentability in view of
the prior art, that is, that the claimed matter
is either not novel under 35 U.S.C. 102, or else
it is obvious under 35 U.S.C. 103. The lan-
guage to be used in rejecting claims should be
unequivocal. See § 707.07 (d).

35 U.S.C. 102 (ANTICIPATION OR LACK OF
NOVELTY)

The distinction between rejections based on
35 U.S.C. 102 and those based on 35 U.S.C. 103
should be kept in mind. Under the former, the
claim is anticipated by the reference. No ques-
tion of obviousness is present. It may be ad-
visable to identify a particular part of the
reference to support the rejection. If not, the
expression "rejected under 35 U.S.C. 102 as
clearly anticipated by" is appropriate.

# 35 U.S.C. 103 (OBVIOUSNESS)

In contrast, 35 U.S.C. 103 authorizes a rejec-
tion where to meet the claim, it is necessary to

modify a single reference or to combine it with
one or more others. After indicating that the
rejection is under 35 U.S.C. 103, there should
be set forth (1) the difference or differences in
the claim over the applied reference (s), (2) the
proposed modification of the applied refer-
ence(s) necessary to arrive at the claimed sub-
ject matter, and (3) an explanation why such
proposed modification would be obvious.

Prior art rejections should ordinarly be con-
fined strictly to the best available art. Excep-
tions may properly be made, e.g., (1) where the
propriety of a 35 U.S.C. 102 rejection depends
on a particular interpretation of a claim; (2)
where a claim is met only in terms by a refer-
ence which does not disclose the inventive con-
cept involved; or (3) where the most pertinent
reference seems likely to be antedated by a rule
131 affidavit or declaration. Such rejections
should be backed up by the best other art rejec-
tions available. Merely cumulative rejections;
i.e., those which would clearly fall if the pri-
mary rejection were not sustained, should be
avoided.

The Court of Customs and Patent Appeals
has held that expedients which are functionally
equivalent to each other are not necessarily ob-
vious in view of one another. In re Scott, 139
USPQ 297, 51 CCPA 747 (1963) ; In re Flint,
141 USPQ 299, 51 CCPA 1230 (1964).

This Court has also held that when a claim is
rejected under 35 U.S.C. 103, a limitation which
is considered to be indefinite cannot be properly
disregarded. If a limitation in a claim is con-
sidered to be indefinite, the claim should be
rejected under 35 U.S.C. 112, second paragraph.
In re Wilson, 165 USPQ 494, 57 CCPA 1029
(1970). Note also In re Steele, 134 USPQ 292,
49 CCPA 1295 (1962). See § 706.03(d).

Where a reference is relied on to support a
rejection, whether or not in a "minor capacity"
that reference should be positively included in
the statement of the rejection. See In re Hoch,
166 USPQ 406, 57 CCPA 1292, footnote 3
(1970).

A U.S. patent may be a reference against an
application even though the patent date is af-
ter the filing date of the application, pro-
vided the filing date of the patent is
prior to the filing date of the application.
It is proper to use such a patent as a basic
or an auxiliary reference and such patents
may be used together as basic and auxiliary ref-
erences. This doctrine arose in Alexander Mil-
burn Co. v. Davis-Bournonville Co., 1926 C.D.
303; 344 O.G. 817; and was enacted into law
by 35 UT.S.C. 102(e). It was held appli-
cable to rejections under 35 U.S.C. 103 by the

U.S. Supreme Court in Hazeltine Research, Inc.
et al. v. Brenner, 147 USPQ 429 (1965).

Public Law 92-34 provided for situations
caused by the postal emergency which began
on March 18, 1970 and ended on or about
March 30, 1970. This law allows the applicant
to claim an earlier filing date if delay in filing
was caused by the emergency. Such earlier filing
dates were printed on the patents along with
the actual filing dates whenever it was possible.
However, patents issued with earlier filing dates
claimed under Public Law 92-34 are effective
as prior art under 35 U.S.C. 102(e) only as of
their actual filing dates and not as of such
claimed earlier filing dates. The details of the
procedure to claim the earlier date appeared at
889 O.G. 1064.

For the proper way to cite a patent issued
after the filing of the application in which it
is being cited, see § 707.05 (e).

## 706.02(a) Establishing "Well Known" Prior Art [R-34]

Things believed to be known to those skilled
in the art are often asserted by the examiner
to be "well known" or "matters of common
knowledge". If justified, the examiner should
not be obliged to spend time to produce docu-
mentary proof. If the knowledge is of such
notorious character that judicial notice can be
taken, it is sufficient so to state. In re Mal-
colm, 1942 C.D. 589; 543 O.G. 440. If the ap-
plicant traverses such an assertion the exam-
iner should cite a reference in support of his
position.

Failure of the applicant to seasonably chal-
lenge such assertions establishes them as ad-
mitted prior art. See In re Gunther, 1942 C.D.
332; 538 O.G. 744; In re Chevenard, 1944 C.D.
141; 500 O.G. 196. This applies also to asser-
tions of the Board. In re Selmi, 1946 C.D.
525; 591 O.G. 160; In re Fischer, 1942 C.D.
295 ; 538 O.G. 503.

For further views on judicial notice. see In re
Ahlert, 57 CCPA 1023, 165 USPQ 418 (1970)
(assertions of technical facts in areas of estoteric
technology must always be supported by citation
of some reference work) : In re Boon, 58 CCPA
1035, 169 USPQ 231 (1971) (a challenge to the
taking of judicial notice must contain adequate
information or argument to create on its face a
reasonable doubt regarding the circumstances
justifying the judicial notice) : and In re Barr.
58 CCPA 1389, 170 USPQ 330 (1971) (involved
references held not a sufficient basis for taking
judicial notice that involved controverted
phrases are art-recognized).

# 706.03 Rejections Not Based on Prior Art [R-31]

The primary object of the examination of an
application is to determine whether or not the
claims define a patentable advance over the
prior art. This consideration should not be
relegated to a secondary position while undue
emphasis is given to non-prior art or "technical"
rejections. Effort in examining should be con-
centrated on truly essential matters, minimizing
or eliminating effort on technical rejections
which are not really critical. Where a major
technical rejection is proper (e.g., lack of proper
disclosure, undue breadth, utility, etc.) such re-
jection should be stated with a full development
of the reasons rather than by a mere conclusion
coupled with some stereotyped expression.

Rejections not based on prior art are ex-
plained in §§ 706.03 (a) to 706.03(z). IF THE
ITALICIZED LANGUAGE IN THESE
SECTIONS IS INCORPORATED IN THE
REJECTION, THERE WILL BE LESS
CHANCE OF A MISUNDERSTANDING
AS TO THE GROUNDS OF REJECTION.

# 706.03(a) Nonstatutory Subject Mat- ter [R-34]

Patents are not granted for all new and use-
ful inventions and discoveries. The subject
matter of the invention or discovery must come
within the boundaries set forth by 35 U.S.C.
101, which permits patents to be granted only
for "any new and useful process, machine,
manufacture, or composition of matter, or any
new and useful improvement thereof.

The term "process" as defined in 35 U.S.C.
100, means process, art or method, and includes
a new use of a known process, machine, manu-
facture, composition of matter, or material.

Decisions have determined the limits of the
statutory classes. Examples of subject matter
not patentable under the Statute follow :

## PRINTED MATTER

For example, a mere arrangement of printed
matter, though seemingly a "manufacture," is
rejected as not being within the statutory
classes. See In re Miller, 164 USPQ 46, 57
CCPA 809 (1969) : Ex parte Gwinn, 112 USPQ
439 (Bd. App. 1955) ; and In re Jones, 153
USPQ 77, 54 CCPA 1218 (1967).

# NATURALLY OCCURRING ARTICLE

Similarly, a thing occurring in nature, which
is substantially unaltered, is not a "manufac-
ture." A shrimp with the head and digestive
tract removed is an example. Ex parte Gray-
son, 51 USPQ 413.

# MANUAL OF PATENT EXAMINING PROCEDURE

METHOD OF DOING BUSINESS 50,00T

Though seemingly within the category of a
process or method, a method of doing business
can be rejected as not being within the statutory
classes. See Hotel Security Checking Co. v.
Lorraine Co., 160 Fed. 467 and In re Wait, 24
USPQ 88, 22 CCPA 822 (1934).

# SCIENTIFIC PRINCIPLE

A scientific principle, divorced from any
tangible structure, can be rejected as not
within the statutory classes. O'Reilly v. Morse,
15 Howard 62.

This subject matter is further limited by the
Atomic Energy Act explained in § 706.03 (b).

# 706.03(b) Barred by Atomic Energy Act [R-18]

A limitation on what can be patented is im-
posed by the Atomic Energy Act of 1954. Sec-
tion 151 (a) (42 U.S.C. 2181a) thereof reads in
part as follows :

No patent shall hereafter be granted for any inven-
tion or discovery which is useful solely in the utiliza-
tion of special nuclear material or atomic energy in
an atomic weapon.

The terms "atomic energy" and "special
nuclear material" are defined in Section 11 of
the Act (42 U.S.C. 2014).

Sections 151 (c) and 151(d) (42 U.S.C.
2181c and d) set up categories of pending appli-
cations relating to atomic energy that must be
brought to the attention of the U.S. Atomic
Energy Commission. Under rule 14(c), appli-
cations for patents which disclose or which ap-
pear to disclose, or which purport to disclose,
inventions or discoveries relating to atomic
energy are reported to the Atomic Energy Com-
mission and the Commission will be given access
to such applications, but such reporting does not
constitute a determination that the subject mat-
ter of each application so reported is in fact
useful or an invention or discovery or that such
application in fact discloses subject matter in
categories specified by the Atomic Energy Act.

All applications received in the Patent Office
are sent to Licensing and Review for screening
by Group 220 personnel, under rule 14(c), in
order for the Commissioner to fulfill his respon-
sibilities under section 151(d) (42 U.S.C.
2181d) of the Atomic Energy Act. Papers sub-
sequently added must be inspected promptly by
the examiner when received to determine
whether the application has been amended to
relate to atomic energy and those so related must
be promptly forwarded to Licensing and Re-
view.

All rejections based upon sections 151 (a)
(42 U.S.C. 2181a), 152 (42 U.S.C. 2182), and
155 (42 U.S.C. 2185) of the Atomic Energy
Act must be made only by Group 220 personnel.

## 706.03(c) Functional [R-34]

See Ex parte Ball et al., 1953 C.D. 4; 675
O.G. 5: In re Arbeit et al., 1953 C.D. 409;
677 O.G. 843 and Ex parte Stanley, 121 USPQ
621.

35 U.S.C. 112. Specification. The specification shall
contain a written description of the invention,
and of the manner and process of making
and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of
carrying out his invention.

The specification shall conclude with one or more
claims particularly pointing out and distinctly claim-
ing the subject matter which the applicant regards as
his invention. A claim may be written in independent
or dependent form, and if in dependent form, it shall
be construed to include all the limitations of the claim
incorporated by reference into the dependent claim.

An element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or
acts in support thereof, and such claim shall be con-
strued to cover the corresponding structure, material,
or acts described in the specification and equivalents
thereof.

Paragraph 3 of 35 U.S.C. 112 has the effect
of prohibiting the rejection of a claim for a
combination of elements (or steps) on
the ground that the claim distinguishes
from the prior art solely in an element
(or step) defined as a "means" (or
"step") coupled with a statement of
function. However this provision of para-
graph 3 must always be considered as subordi-
nate to the provision of paragraph 2 that the
claim particularly point out and distinctly
claim the subject matter. If a claim be found
to contain language approved by paragraph 3
such claim should always be tested additionally
for compliance with paragraph 2 and if it fails
to comply with the requirements of paragraph
2, the claim should be so rejected and the rea-
sons fully stated.

Paragraph 3 of 35 U.S.C. 112 makes no
change in the established practice of rejecting
claims as functional in situations such as the
following :

1\. A claim which contains functional lan-
guage not supported by recitation in the claim
of sufficient structure to warrant the presence

of the functional language in the claim. An
example of a claim of this character may be
found in In re Fuller, 1929 C.D. 172; 388 O.G.
279. The claim reads :

A woolen cloth having a tendency to wear
rough rather than smooth.

2\. A claim which recites only a single means
and thus encompasses all possible means for
performing a desired function. For an ex-
ample, see the following claim in Ex parte
Bullock, 1907 C.D. 93; 127 O.G. 1580:

In a device of the class described, means for
transferring clothes-carrying rods from one
position and depositing them on a suitable
support.

Note the following cases :

1\. In re Hutchinson, 69 USPQ 138, 33
COPA 879 (1946), the terms "adapted for
use in" and "adapted to be adhered to" were
held not to constitute a limitation in any
patentable sense.

2\. In re Mason, 114 USPQ 127, 44 CCPA
937 (1957), the functional "whereby" state-
ment was held not to define any structure and
accordingly could not serve to distinguish.

3\. In re Boller, 141 USPQ 740, 51 CCPA
1484 (1964), the term "volatile neutralizing
agent" was held to be patentably effective
and commensurate with the breadth of the
disclosed invention.

4\. In re Land and Rogers, 151 USPQ 621
(1966), the expression "adapted to be ren-
dered diffusible in said liquid composition
only after at least substantial development"
was given weight.

5\. In re Halleck, 164 USPQ 647, 57 CCPA
954 (1970), the term "an effective amount"
was held not objectionable.

6\. In re Swinehart and Sfiligoj, 169 USPQ
226 (1971), held that the meaning of "trans-
parent to infra-red rays" is sufficiently clear.
7\. In re Barr et al., 170 USPQ 330, 58
CCPA 1388 (1971), held that the expression
"incapable of forming a dye with said oxi-
dized developing agent," set forth definite
boundaries. [R-40]

## 706.03(d) Vague and Indefinite [R- 34]

When the examiner is satisfied that patenta-
ble novelty is disclosed and it is apparent to
the examiner that the claims are directed to
such patentable subject matter, he should al-
low claims which define the patentable novelty
with a reasonable degree of particularity and
distinctness. Some latitude in the manner of
expression and the aptness of terms should be
permitted even though the claim language is
not as precise as the examiner might desire.

The fact that a claim is broad does not nec-
essarily justify a rejection on the ground that
tlie claim is vague and indefinite or incom-
plete. In non-chemical cases, a claim may, in
general, be drawn as broadly as permitted by
the prior art.

The rejection of a claim as indefinite would
appear to present no difficulties. On occasion,
however, a great deal of effort is required to
explain just what is wrong with the claim,
when writing the examiner's letter. Although
cooperation with the attorney is to be com-
mended, undue time should not be spent trying
to guess what the attorney was trying to say in
the claim. Sometimes, a rejection as indefinite
plus the statement that a certain line is mean-
ingless is sufficient. The examiner's action
should be constructive in nature and when pos-
sible he should offer a definite suggestion for
correction.

The mere inclusion of reference numerals in
a claim otherwise allowable is not a ground
for rejection. But see Ex parte Osborne, 1900
C.D. 137; 92 O.G. 1797.

Alternative expressions such as "brake or
locking device" may make a claim indefinite if
the limitation covers two different elements.
If two equivalent parts are referred to such as
"rods or bars", the alternative expression may
be considered proper.

The inclusion of a negative limitation shall
not, in itself, be considered a sufficient basis
for objection to or rejection of a claim. How-
ever, if such a limitation renders the claim
unduly broad or indefinite or otherwise results
in a failure to point out the invention in the
manner contemplated by 35 U.S.C. 112, an ap-
propriate rejection should be made.

Generally speaking, the inclusion of (1) nega-
tive limitations and (2) alternative expressions,
provided that the alternatively expressed ele-
ments are basically equivalents for the purpose
of the invention, are permitted if no uncertainty
or ambiguity with respect to the question of
scope or breadth of the claim is presented.

The examiner has the responsibility to make
sure the wording of the claims is sufficiently
definite to reasonably determine the scope. It is
applicant's responsibility to select proper word-
ing of the claim, except to the extent that the
selection of words makes the claims indefinite.
Under no circumstances should a claim be re-
jected merely because the examiner prefers a
different choice of wording.

Still another way in which a claim can be in-
definite is where a non sequitur occurs. For
example, a claim is inferential and therefore
indefinite when it recites "said lever" and there
was no earlier reference or no antecedent in
the claim to a lever. An indirect limitation

706.03(e)

also affords a ground of rejection as indefinite.
If a "lever" is set forth and, later in the claim,
"said aluminum lever" is recited, the claim is
rejected as indefinite.

Rejections for indefiniteness were affirmed in
In re Cohn, 169 USPQ 95 (CCPA 1971) ; In
re Hammack, 166 USPQ 209 (CCPA 1970) ;
and In re Collier 158 USPQ 266 (CCPA 1968).

Rejections for indefiniteness were reversed in
In re Castaing, 166 USPQ 550 (CCPA 1970) ;
In re Fisher, 166 USPQ 18 (CCPA, 1970) ; and
In re Wakefield, 164 USPQ 636 (CCPA 1970).

# 706.03 (e) Product by Process [R- 40]

An article may be claimed by a process of
making it provided it is definite. In re Moeller,
1941 C.D. 316; 48 USPQ 542; 28 CCPA 932;
In re Luck, 177 USPQ 523 (CCPA 1973) ; In
re Steppan, 156 USPQ 143 (CCPA 1967) ; and
In re Pilkington, 162 USPQ 145 (CCPA 1969).

When the prior art discloses a product which
reasonably appears to be either identical with
or only slightly different than a product claimed
in a product-by-process claim, a rejection based
alternatively on either section 102 or 103 of the
statute is appropriate. As a practical matter,
the Patent Office is not equipped to manufacture
products by the myriad of processes put before
it and then obtain prior art products and make
physical comparisons therewith. A lesser burden
of proof is required to make out a case of prima
facie obviousness for product-by-process claims
because of their peculiar nature than when a
product is claimed in the conventional fashion.
In re Brown, 59 CCPA 1036, 173 USPQ 685
(1972) ; In re Fessmann, 180 USPQ 324 (CCPA
1974).

The fact that it is necessary for an applicant
to describe his product in product-by-process
terms does not prevent him from presenting
claims of varying scope, Ex parte Pantzer and
Feier, 176 USPQ 141 (Board of Appeals, 1972).

# 706.03 (f) Incomplete [R-27]

A claim can be rejected as incomplete if it
omits essential elements, steps or necessary
structural cooperative relationship of elements,
such omission amounting to a gap between the
elements, steps or necessary structural connec-
tions. Greater latitude is permissible with re-
spect to the definition in a claim of matters not
essential to novelty or operability than with
respect to matters essential thereto. See also
§ 706.03(d).

# 706.03(g) Prolix goal lanotionif Ad: 1

Claims are rejected as prolix when they con-
tain long recitations of unimportant details
which hide or obscure the invention. Ex parte
Iagan, 1911 C.D. 10; 162 O.G. 538, expresses
the thought that very long detailed claims set-
ting forth so many elements that invention can-
not possibly reside in the combination should
be rejected as prolix. See also In re Ludwick,
1925 C.D. 306; 339 O.G. 393.

# 706.03 (h) Nonstatutory Claim [R- 27]

Some applications when filed contain an om-
nibus claim such as "A device substantially as
shown and described."

Such a claim can be rejected as follows:

Claim
is rejected for failing to par-
ticularly point out and distinctly claim the
invention as required in 35 U.S.C. 112.

For cancellation of such a claim by examin-
er's amendment, see § 1302.04 (b).

# 706.03(i) Aggregation [R-34]

Rejections on the ground of aggregation
should be based upon a lack of cooperation be-
tween the elements of the claim. Many deci-
sions and some legal writers extend the term
to include old and exhausted combinations
(§ 706.03(j)). Confusion as to what is meant
can be avoided by treating all claims which in-
clude more than one element as combinations
(patentable or unpatentable) if there is actual
cooperation between the elements, and as ag-
gregations if there is no cooperation.

Example of aggregation: A washing ma-
chine associated with a dial telephone.

Example of old combination: An improved
carburetor claimed in combination with a gaso-
line engine.

A claim is not necessarily aggregative be-
cause the various elements do not function si-
multaneously. A typewriter, for example, is a
good combination. See also In re Worrest, 40
CCPA 804, 96 USPQ 381 (1953). Neither is a
claim necessarily aggregative merely because
elements which do cooperate are set forth in
specific detail.

A rejection on aggregation should be made
only after consideration of the court's comments
in In re Gustafson, 51 CCPA 1358, 141 USPQ
585 (1964).

# 706.03(j) Old Combination [R-34]

The rejection on the ground of old combina-
tion (synonymous with "exhausted combina-
tion") requires the citation of a reference, but
is treated here because of its relation to aggre-
gation. The reference (not a combination of
references, of course) is cited, not to antici-
pate the claim, but to anticipate the broad
combination set forth in the claim. Moreover,
the cooperation and result between the ele-
ments in the reference must be the same as it
is in the claim.

A rejection on the ground of old combination
should be made whenever proper. Whether
subcombination claims have been presented or
allowed in the same application, or whether
other grounds for rejection of the combination
claims exist, are not determinative of the pro-
priety of this rejection. The rejection is proper
when a single reference discloses broadly a com-
bination of the same elements functionally co-
operating in substantially the same manner to
produce substantially the same results as that
of the claimed combination. Ex parte Silver-
stein, 125 USPQ 238. The fact that an appli-
cant has improved one element of a combina-
tion which may be per se patentable does not
entitle him to a claim to the improved element
in combination with old elements where the ele-
ments perform no new function in the claimed
combination. In re Hall, 41 CCPA 759.

Example : An improved (specifically recited)
carburetor claimed in combination with a gaso-
line engine. A reference is cited which shows
a carburetor combined with a gasoline engine.
This shows the broad combination to be old.
Both in the reference and in the claimed com-
bination, the cooperation between the carbu-
retor and engine is the same and the end result
is the same. The claimed combination is an
improvement over the prior art only because
of the improved carburetor. The carburetor
has separate status, since entire subclasses are
devoted to carburetors, claimed as such. A
reference is preferably cited to show the sepa-
rate status and development. (See § 904.01
(d).)

Old combination rejections ordinarily are
based on 35 U.S.C. 112 ( failure to point out the
invention). The rejection should make it clear
exactly what the combination is and why it is
thought that any improved element does not
modify the action of the combination. A sug-
gested form for use in making an old combina-
tion rejection is as follows:

"Claim 1 is rejected under 35 U.S.C. 112 as
being drawn to the old combination of a bell,
a battery and a switch connected in series by
wire conductors. This combination is shown

to be old by the patent to Jones which discloses
broadly the same elements funtionally inter-
related in the same manner to produce substan-
tially the same results. The combination of
claim 1 differs from that shown in Jones in
setting forth a specific construction of the bat-
tery itself. Since the latter does not modify
the action of the other elements recited in the
claim in any material manner, no new combina-
tion is seen to exist. In re Hall, 100 USPQ
46; 41 CCPA 759: 208 F. 2d 370; 680 O.G.5."

See also Lincoln Engineering Co., v. Stewart-
Warner Corp., 303 U.S. 545, 37 USPQ 1 (1938) ;
In re McCabe, 48 CCPA 881, 129 USPQ 149
(1961) (discussion of claim 13) ; and particu-
larly In re Bernhart, 57 CCPA 737, 163 USPQ
611 (1969).

# 706.03(k) Duplicate Claims; Double Patenting [R-27]

Inasmuch as a patent is supposed to be lim-
ited to only one invention or, at most, several
closely related indivisible inventions, limiting
an application to a single claim, or a single
claim to each of the related inventions might
appear to be logical as well as convenient.
However, court decisions have confirmed ap-
plicant's right to restate (i.e., by plural claim-
ing) his invention in a reasonable number of
ways. Indeed, a mere difference in scope be-
tween claims has been held to be enough.

Nevertheless. when two claims in an appli-
cation are duplicates, or else are so close in
content that they both cover the same thing,
despite a slight difference in wording, it is
proper after allowing one claim to reject the
other as being a substantial duplicate of the
allowed claim. Also, it is possible to reject.
one claim on an allowed claim if they differ
only by subject matter old in the art. The lat-
ter ground of rejection is set forth in the fol-
lowing paragraph quoted from Ex parte
Whitelaw, 1915 C.D. 18; 219 O.G. 1237:

"Claim 54 is not patentable over claim 51
and claims 53, 55 and 56 are not patentable
over claim 50 in view of Comstock, No. 590,657,
which shows that it is old to employ an engine-
casing in tools of this character. The claims
held patentable are considered as fully cover-
ing applicant's invention, and applicant can-
not be permitted to multiply his claims by
presenting alleged combinations which distin-
guish from the real invention only by including
elements which are old in the art and perform
no new function."

This rejection (the ex parte Whitelaw doc-
trine) is usually not applied if there are only
a few claims in the application.

# MANUAL OF PATENT EXAMINING PROCEDURE

Situations related to that given above are as
follows:

Where there is a common assignee for two
or more applications by different inventors, and
the applications contain conflicting claims, see
§ 804.03.

## DOUBLE PATENTING

Where there are conflicting claims in differ-
ent applications of the same inventor, one of
which is assigned, see § 304.

Where the same inventor has two or more
applications for species or for related inven-
tions, see Chapter 800, particularly §§ 804-
804.02, 806.04 (h), 822 and 822.01 for double pat-

enting rejections of inventions not patentable
over each other.

APPLICATION FILED UNDER 35 U.S.C 121

The Commissioner has determined that under
35 U.S.C. 121, the Patent Office cannot reject a
divisional application on the parent patent if
the divisional application is filed as a result of
a requirement for restriction made by the Office
even though the requirement for restriction
relates to species. In re Joyce, 1958 C.D. 2;
115 USPQ 412. See also In re Herrick et al.,
1958 C.D. 1; 115 USPQ 412 where the Com-

missioner ruled that a requirement for restric-
tion should not be made in an application claim-
ing more than five species if the examiner is of
the opinion that the various species are obvi-
ously unpatentable over one another. [R-20]
3979

## 706.03(1) Multiplicity [R-34]

Rule 75(b). More than one claim may be presented,
provided they differ substantially from each other and
are not unduly multiplied.

An unreasonable number of claims; that is
unreasonable in view of the nature and scope
of applicant's invention and the state of the
art, may afford a basis for a rejection on the
ground of multiplicity. A rejection on this
ground should include all the claims in the case
inasmuch as it relates to confusion of the issue.

To avoid the possibility that an application
which has been rejected on the ground of un-
due multiplicity of claims may be appealed to
the Board of Appeals prior to an examination
on the merits of at least some of the claims
presented, the examiner should, at the time of
making the rejection on the ground of multi-
plicity of claims, specify the number of claims
which in his judgment is sufficient to prop-
erly define applicant's invention and require
the applicant to select certain claims, not to
exceed the number specified, for examination on
the merits. The examiner should be reason-
able in setting the number to afford the appli-
cant some latitude in claiming his invention.

The earlier views of the Court of Customs and
Patent Appeals set forth in In re Chandler, 117
USPQ 361, 45 CCPA 911 (1958) and In re
Chandler, 138 USPQ 138. 50 CCPA 1422 (1963)
have been somewhat revised by its views in In
re Flint, 162 USPQ 228. 56 CCPA 1300 (1969)
and In re Wakefield, 164 USPQ 636, 57 CCPA
959 (1970).

If a rejection on multiplicity is in order the
examiner should make a telephone call explain-
ing that the claims are unduly multiplied and
will be rejected on that ground. Note $ 408. He
should request selection of a specified number
of claims for purposes of examination.

If time for consideration is requested arrange-
ments should be made for a second telephone
call, preferably within three working days.

When claims are selected, a formal multi-
plicity rejection is made, including a complete
record of the telephone interview, followed by
an action on the selected claims.

When applicant refuses to comply with the
telephone request, a formal multiplicity rejec-
tion is made. No reference should be made to
the unsuccessful telephone call.

The applicant's response to a formal multi-
plicity rejection of the examiner, to be com-
plete, must either :

1\. Reduce the number of claims presented to
those selected previously by telephone, or if no
previous selection has been made to a number
not exceeding the number specified by the ex-
aminer in the Office action, thus overcoming the
rejection based upon the ground of multiplicity,

2\. In the event of a traverse of said rejection
applicant, besides specifically pointing out the
supposed errors of the multiplicity rejection is
required to confirm his selection previously
made by telephone, or if no previous selection
has been made, select certain claims for purpose
of examination. the number of which is not
greater than the number specified by the
examiner.

If the rejection on multiplicity is adhered to.
all claims retained will be included in such
rejection and the selected claims only will be
additionally examined on their merits. This
procedure preserves applicant's right to have
the rejection on multiplicity reviewed by the
Board of Appeals.

See also §§ 608.01 (p) and 715.03.

706.03 (z) Undue Breadth [R-32]

In applications directed to inventions in arts
where results are predictable, broad claims may

properly be supported by the disclosure of a
single species. In re Vickers et al., 1944 C.D.
324; 61 USPQ 122 : In re Cook and Merigold,
169 USPQ 298.

However, in applications directed to inven-
tions in arts where the results are unpredictable,
the disclosure of a single species usually does
not provide an adequate basis to support generic
claims. In re Sol, 1938 C.D. 723; 497 O.G. 546.
This is because in arts such as chemistry it is
not obvious from the disclosure of one species,
what other species will work. In re Dreshfield,
1940 C.D. 351; 518 O.G. 255 gives this general
rule : "It is well settled that in cases involving
chemicals and chemical compounds, which dif-
fer radically in their properties it must appear
in an applicant's specification either by the
enumeration of a sufficient number of the mem-
bers of a group or by other appropriate lan-
guage, that the chemicals or chemical combina-
tions included in the claims are capable of ac-
complishing the desired result." The article
"Broader than the Disclosure in Chemical
Cases", 31 J.P.O.S. 5, by Samuel S. Levin
covers this subject in detail.

# 706.04 Rejection of Previously Al- lowed Claims

A claim noted as allowable shall thereafter
be rejected only after the proposed rejection
has been submitted to the primary examiner
for consideration of all the facts and approval
of the proposed action.

Great care should be exercised in authorizing
such a rejection. See Ex parte Grier, 1923
C.D. 27; 309 O.G. 223; Ex parte Hay, 1909
C.D. 18; 139 O.G. 197.

## PREVIOUS ACTION BY DIFFERENT EXAMINER

Full faith and credit should be given to the
search and action of a previous examiner un-
less there is a clear error in the previous action
or knowledge of other prior art. In general, an
examiner should not take an entirely new ap-
proach or attempt to reorient the point of view
of a previous examiner, or make a new search
in the mere hope of finding something.

Because it is unusual to reject a previously
allowed claim, the examiner should point out
in his letter that the claim now being rejected
was previously allowed.

# 706.05 Rejection After Allowance of Application

See § 1308.01 for a rejection based on a refer-
ence.

For rejection of claims in an allowed case
which has failed to make the date of a senior

application in correspondence under rule 202,
see § 1101.01 (i).

# 706.06 Rejection of Claims Copied From Patent

See § 1101.02(f).

# 706.07 Final Rejection

Rule 113. Final rejection or action. (a) On the
second or any subsequent examination or considera-
tion, the rejection or other action may be made final,
whereupon applicant's response is limited to appeal in
the case of rejection of any claim (rule 191) or to
amendment as specified in rule 116. Petition may be
taken to the Commissioner in the case of objections
or requirements not involved in the rejection of any
claim (rule 181). Response to a final rejection or
action must include cancellation of, or appeal from the
rejection of, each claim so rejected and, if any claim
stands allowed, compliance with any requirement or
objection as to form.

(b) In making such final rejection, the examiner
shall repeat or state all grounds of rejection then con-
sidered applicable to the claims in the case, clearly
stating the reasons therefor.

Before final rejection is in order a clear issue
should be developed between the examiner and
applicant. To bring the prosecution to as
speedy conclusion as possible and at the same
time to deal justly by both the applicant and
the public, the invention as disclosed and
claimed should be thoroughly searched in the
first action and the references fully applied;
and in response to this action the applicant
should amend with a view to avoiding all the
grounds of rejection and objection. Switching
from one subject matter to another in the
claims presented by applicant in successive
amendments, or from one set of references to
another by the examiner in rejecting in suc-
cessive actions claims of substantially the same
subject matter, will alike tend to defeat at-
taining the goal of reaching a clearly defined
issue for an early termination; i.e., either an
allowance of the case or a final rejection.

While the rules no longer give to an appli-
cant the right to "amend as often as the ex-
aminer presents new references or reasons for
rejection", present practice does not sanction
hasty and ill-considered final rejections. The
applicant who is seeking to define his invention
in claims that will give him the patent protec-
tion to which he is justly entitled should re-
ceive the cooperation of the examiner to that
end, and not be prematurely cut off in the

prosecution of his case. But the applicant
who dallies in the prosecution of his case, re-
sorting to technical or other obvious subter-
fuges in order to keep the application pending
before the primary examiner, can no longer
find a refuge in the rules to ward off a final
rejection.

The examiner should never lose sight of the
fact that in every case the applicant is entitled
to a full and fair hearing, and that a clear issue
between applicant and examiner should be de-
veloped, if possible, before appeal is prose-
cuted. However, it is to the interest of the
applicants as a class as well as to that of the

706.07(d)

public that prosecution of a case be confined to
as few actions as is consistent with a thorough
consideration of its merits.

Neither the statutes nor the Rules of Practice
confer any right on an applicant to an extended
prosecution. Ex parte Hoogendam, 1939 C.D.
3; 499 O.G. 3.

# STATEMENT OF GROUNDS

In making the final rejection, all outstand-
ing grounds of rejection of record should be
carefully reviewed, and any such grounds re-
lied on in the final rejection should be reiter-
ated. They must also be clearly developed to
such an extent that applicant may readily judge
the advisability of an appeal unless a single
previous Office action contains a complete state-
ment supporting the rejection.

However. where a single previous Office ac-
tion contains a complete statement of a ground
of rejection, the final rejection may refer to
such a statement and also should include a re-
buttal of any arguments raised in the appli-
cant's response. If appeal is taken in such a
case, the examiner's answer should contain a
complete statement of the examiner's position.
The final rejection letter should conclude with
a statement that :

"The above rejection is made FINAL", or
"This is a FINAL rejection".

The Office action first page form POL-326
should be used in all Office actions up to and
including final rejections.

A final rejection must be signed by a primary
examiner.

For amendments filed after final rejection,
see §§ 714.12 and 714.13. [R-29]

# 706.07 (a) Final Rejection, When Proper on Second Action [R-43]

Due to the change in practice as affecting
final rejections, older decisions on questions of
prematureness of final rejection or admission of
subsequent amendments do not necessarily re-
flect present practice.

Under present practice, second or any subse-
quent actions on the merits shall be final. except
where the examiner introduces a new ground
of rejection not necessitated by amendment of
the application by applicant whether or not the
prior art is already of record. Furthermore, a
second or any subsequent action on the merits
in any application will not be made final if it
includes a rejection. on newly cited art, of any
claim not amended by applicant in spite of the
fact that other claims may have been amended
to require newly cited art.

See § 809.02(a) for actions which indicate
generic claims not allowable.

In the consideration of claims in an amended
case where no attempt is made to point out the
patentable novelty, the examiner should be on
guard not to allow such claims. See § 714.04.
The claims, however, may be finally rejected if,
in the opinion of the examiner, they are clearly
open to rejection on grounds of record.

# 706.07 (b) Final Rejection, When Proper on First Action [R-43]

The claims of a new application may be finally
rejected in the first Office action in those situa-
tions where (1) the new application is a con-
tinuing application of, or a substitute for, an
earlier application, and (2) all claims of the new
application (a) are drawn to the same invention
claimed in the earlier application, and (b)
would have been properly finally rejected on the
grounds or art of record in the next Office action
if they had been entered in the earlier applica-
tion.

However, it would not be proper to make final
a first Office action in a continuing or substitute
application where that application contains
material which was presented in the earlier
application after final rejection or closing of
prosecution but was denied entry for one of the
following reasons :

(1) New issues were raised that required fur-
ther consideration and/or search. or

(2) The issue of new matter was raised.

Further, it would not be proper to make final
a first Office action in a continuation-in-part
application where any claim includes subject
matter not present in the earlier application.

A request for an interview prior to first ac-
tion on a continuing or substitute application
should ordinarily be granted.

# 706.07(c) Final Rejection, Prema- ture

Any question as to prematureness of a final
rejection should be raised, if at all, while the
case is still pending before the primary exam-
iner. This is purely a question of practice,
wholly distinct from the tenability of the re-
jection. It may therefore not be advanced as a
ground for appeal, or made the basis of com-
plaint before the Board of Appeals. It is re-
viewable by petition.

706.07(d) Final Rejection, With-
drawal of, Premature
[R-29]

If, on request by applicant for reconsidera-
tion, the primary examiner finds the final rejec-

tion to have been premature, he should with-
draw the finality of the rejection.

# 706.07(e) Withdrawal of Final Re- jection, General [R-22]

See §§ 714.12 and 714.13, Amendments after
final rejection.

Once a final rejection that is not premature
has been entered in a case, however, it should
not be withdrawn at the applicant's request ex-
cept on the showing of rule 116. This does
not mean that no further amendment or argu-
ment will be considered. An amendment that
will place the case either in condition for al-
lowance or in better form for appeal may be
admitted. Also, amendments complying with
objections or requirements as to form are to be
permitted after final action in accordance with
rule 116(a).

The examiner may withdraw the rejection of
finally rejected claims. If new facts or reasons
are presented such as to convince the examiner
that the previously rejected claims are in fact
allowable, then the final rejection should be
withdrawn. Occasionally, the finality of a re-
jection may be withdrawn in order to apply a
new ground of rejection.

Although it is permissible to withdraw a final
rejection for the purpose of entering a new
ground of rejection, this practice is to be limited
to situations where a new reference either fully
meets at least one claim or meets it except for
differences which are shown to be completely
obvious. Normally, the previous rejection
should be withdrawn with respect to the claim
or claims involved.

The practice should not be used for applica-
tion of subsidiary references, or of cumulative
references, or of references which are merely
considered to be better than those of record.
Furthermore, the practice should not be used
for entering new non-reference or so-called "for-
mal" grounds of rejection such as those under
35 U.S.C. 112.

When a final rejection is withdrawn, all
amendments filed after the final rejection are
ordinarily entered.

## 707 Examiner's Letter or Action [R-43]

Rule 104. Nature of examination; eraminer's action.
(a) On taking up an application for examination, the
examiner shall make a thorough study thereof and shall
make a thorough investigation of the available prior art
relating to the subject matter of the invention sought to
be patented. The examination shall be complete with re-
spect both to compliance of the application with the
statutes and rules and to the patentability of the in-

vention as claimed, as well as with respect to matters
of form, unless otherwise indicated.

(b) The applicant will be notified of the examiner's
action. The reasons for any adverse action or any ob-
jection or requirement will be stated and such informa-
tion or references will be given as may be useful in
aiding the applicant to judge of the propriety of con-
tinuing the prosecution of his application.

Under the current first action procedure, the
examiner signifies on the action form POL-326
certain information including the period set for
response, any attachments, and a "summary of
action," the position taken on all claims.

This procedure also allows the examiner, in
the exercise of his professional judgment to
indicate that a discussion with applicant's
representative may result in agreements
whereby the application may be placed in con-
dition for allowance and that the examiner
will telephone the representative within about
two weeks. Under this practice the applicant's
representative can be adequately prepared to
conduct such a discussion. Any resulting amend-
ment may be made either by the applicant's
attorney or agent or by the examiner in an
examiner's amendment. It should be recog-
nized that when extensive amendments are nec-
essary it would be preferable if they were filed
by the attorney or agent of record, thereby
reducing the professional and clerical workload
in the Office and also providing the file wrapper
with a better record, including applicant's argu-
ments for allowability as required by rule 111.

The list of references cited appears on a sep-
arate form, Notice of References Cited, PO-892,
(copy in § 707.05) attached to applicant's copies
of the action. Where applicable, Notice of In-
formal Patent Drawings, PO-948 and Notice
of Informal Patent Application, PO-152 are
attached to the first action.

The attachments have the same paper number
and are to be considered as part of the Office
action.

Replies to Office actions should include the
3-digit art unit number and the examiner's
name to expedite handling within the Office.

In accordance with the Patent Statute,
"Whenever, on examination, any claim for a
patent is rejected or any objection . . . made"
(35 U.S.C. 132) notification of the reasons for
rejection and/or objection together with such
information and references as may be useful in
judging the propriety of continuing the prose-
cution, as required under the Statute, should
appear in colums 2-4 of a completed form PO-
1142, supplemented by relevant sections of the
Statute on the reverse side of the form.

Upon proper completion of form PO-1142:
Column 1 will identify the rejected and/or
objected claim (s) ;

· DEPARTMENT OF COMMENCE (
UNITED STATES OF AMIME

U.S. DEPARTMENT OF COMMERCE
Patent Office

Address Only: COMMISSIONER OF PATENTS
Washington, D.C. 20231

C.D. Henry
Art Unit 118

03/21/74
John A. Novel

999,997

F
¥
John C. Able
1234 Jefferson Davis Highway
Arlington, Virginie 22202

Paper No.

MAILED

Mailed

JAN 1 4 1975

GROUP 110

This is a communication from the Examiner in

charge of your application.

Commissioner of Patents

☒
This application has been examined.
☐
Responsive to communication filed
☐
This action is made final.

A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS ACTION IS SET TO EXPIRE
3
MONTH(S).
DAYS FROM THE DATE OF THIS LETTER.

### PART I

The following attachments(s) are part of this action:

3
b
☒
Notice of References Cited, Form PO-892
☐
Notice of informal Patent Drawing. PO-948

€
☐
Notice of Informai Patent Application,
Form PO-152

☐

#### PART II

### Summary of Action

1
☒
Claims
1-11
are presented for examination.

2
☐
Claims
are allowed.
3
☒
Claims
9-11
would be allowable if amended as indicated.
4
☒
Claims
1-8
are rejected.
5
☒
Claims
9-11
are objected to.

☐

Claims

are subject to restriction or election requirement.

7\.
☐
Claims
are withdrawn from consideration.
8
☐
Since this application appears to be in condition for allowance except for formal matters, prosecution as to the
merits is closed in accordance with the practice under Ex parte Quayle. 1935 C.D. 11; 453 OG. 213.
9
☐
Since it appears that a discussion with applicant's representative may result in agreements whereby the appli.
cation may be placed in condition for allowance, the examiner will telephone the representative within about 2
weeks from the date of this letter
10
☐
Receipt is acknowledged of papers under 35 USC 1 19, which papers have been placed of record in the file.

on
11
☐
Applicant's claim for priority based on an application filed in
cacknowledged It is noted. however, that a certified copy as required by 35 USC 119 has not been received.
12
☐
Other

----
-1-

# MANUAL OF PATENT EXAMINING PROCEDURE

FORM PO-1142 U. S. DEPARTMENT OF COMMERCE Rev. 6-72} Patent Office

SERIAL PART 1!I NUMBER 999, 999 GROUP ART UNIT 353 NOTIFICATION OF REJECTION(S) AND/OR OBJECTION(S) (35 USC 132)

CLAIMS 1

REASONS FOR REJECTION 2

REFERENCES . 3:

INFORMATION IDENT. FICATION AND COMMENTS :4)

1,3,4

35 U.S.C. 102

2,5

35 u.S.c. 102

B/C

Axle assemblies of each fixed to tubular members ( Fig. 2 of B, Fig. 4 of C).

6,7

35 U.S. C. 103

DVE+F

Obvious to extend auxiliary wheels of D (Fig. 1) laterally as in E ( p. 2 , Is . 1 - 6 ) . Also , obvious to pro- vide vertically adjustable wheels in D as shown by F (Fig. 3).

6,7

35 U.S.c. 112

"Aperture" is misdescriptive in defining a sleeve within a frame member.

5 6

35 U.S.C. 103

AVE

Obvious to extend auxiliary wheels of A (Fig. 1) laterally as in E (p. 2, Is. 1-6).

9-11

Objected to - depend from claim ; will be allowed if in independent form.

rejected rewritten

7 8

Claim 6 would be specific hydraulic

allowed if amended to recite the wheel-moving arrangement.

G cited to show moving mechanism.

an analogous hydraulic wheel-

· Capital letters representing references are identified

on EXAMINER TEL. NO. 7031 -557

-3070

accompanying am PO-892. Thomas Y Callaghan The symbol "y" between letters represents - in view of -. The combat ". " or "&amp;" between letters represents - and -. A slash "/" between letters represents the alternative - of - Thomas F. Callaghan NOTE Sections 100. 101. 102. 103 and 112 of the Patent Statute Primary Examiner . Title Sont the united States Codes are reproduced on the Art Url: 353 back of this heat. -2-

Column 2, in the case of a rejection, will give
the reason by designating the applicable statu-
tory or other legal ground;

Column 3 will identify the references relied
upon in the rejection by the capital letters on
"Notice of References Cited" form PO-892, the
relation of the references as applied being indi-
cated by symbols illustrated and defined at the
bottom of the form;

Column 4 will supply the necessary informa-
tion useful in judging the propriety of con-
tinuing the prosecution.

When considered necessary for adequate in-
formation, the particular figure(s) of the
drawing(s), and/or page(s) or paragraph(s)
of the reference(s), and/or any relevant com-
ments briefly stated should be inserted in
column 4. For rejections under section 103, the
way in which a reference is modified or plural
references are combined should be set out in
condensed language.

In exceptional cases, as to satisfy the more
stringent requirements under rule 106(b), and
in pro se cases where the inventor is unfamiliar
with the patent law and practice, a more com-
plete explanation may be needed. If necessary,
a regular action, not using form PO-1142, may
be prepared.

Revised "Notice of References Cited" form
PO-892 with the capital letters in the left-hand
margin should be used with form PO-1142. To
facilitate the use of these letters for reference
identification, the patents and other references
should be listed in the order they are first used
on form PO-1142. Accordingly, the first U.S.
patent used as a reference in preparing form
PO-1142 will be identified by letter "A" and
listed in the first line of form PO-892 regard-
less of the patent number, the second U.S.
patent used will be identified as "B" and listed
in the second line, etc. The first foreign patent
or publication used will be listed on the line
identified by letter "L".

Objections to the disclosure, explanation of
references cited but not applied. indication of
allowable subject matter, requirements (includ-
ing requirements for restriction if space is
available) and any other pertinent comments
may be written at the bottom of form PO-1142.

Summary sheet POL-326, which serves as the
first page of the Office action, will continue to
be used with all first actions and. as usual, will
identify any allowed claims. This summary
sheet, designated as page 1. identifies two parts
of the Office action with Roman numerals as
"Part I" and "Part II".

Form PO-1142 has "Part III" printed
thereon for identification and distinction with
regard to other parts of the action. The form is
to be numbered page 2 in the space provided at

the bottom, and material to be inserted on the
lower part of the form should be arranged in
paragraph format starting with and sequen-
tially numbered after paragraph 5 with a blank
space between each paragraph.

The prearranged paragraphs numbered 1-4
on the upper part of form PO-1142 are expected
to be adequate for all the claims that are sub-
ject to rejection and/or objection in most cases.
If additional paragraphs are needed for that
purpose, they may be arranged on the lower
part of the form with the claims, reasons for
rejection, references and information vertically
aligned with the columns on the upper part of
the form, with or without extending the vertical
column lines downward and, if extended down-
ward, prefereably without passing through the
vacant space between paragraphs 4 and 5.

If space in the form including the lower part
is inadequate for all the claims that are subject
to rejection and/or objection, a second form
PO-1142 may be used, marked as page 3 and
further marked for distinguishing identifica-
tion as "Part III-a" with the lower case letter
"a" inserted after the printed Roman numeral
III.

If the space on the form or forms is inade-
quate for completing the rest of the action
(other than rejection and/or objection of
claims), a regular blank action sheet may be
used, marked with a page number succeeding
the page number on the form(s). This page
should be marked as "Part IV", and marked
with paragraph numbers in sequential order
starting with number "1".

If form PO-1142 is the last sheet of the action
without additional typed pages annexed, exam-
iner's signatures and telephone numbers should
be located at the bottom of the form at the indi-
cated location.

A yellow worksheet form PO-1142A, corre-
sponding to the form PO-1142, is available for
use by the examiner in preparing his action for
typing. However, the action should preferably
be written or printed by hand directly on form
PO-1142, rather than typed if the writing or
printing is legible and clearly readable in the
opinion of the supervisory primary examiner.
All doubts concerning legibility of writing or
printing shall be resolved in favor of a typed
action. A BLACK INK BALL POINT PEN
MUST BE USED.

The first action should be complete, with a
full explanation of the reasons for decisions on
the merits in condensed language, using essen-
tial words and phrases in abbreviated form.
Identification of patentable subject matter and
constructive suggestions for rendering the case
allowable should be made whenever possible,
§ 707.07 (j).

Form PO-1142 should be used only for non-
final first actions on the merits concerned with
the rejection and/or objection of claims on
statutory or other legal grounds.

Second actions are to be made final according
to prevailing practice using conventional refer-
ence identification, such as patentee name,
rather than the capital letter symbols used on
the first action form PO-1142.

It is imperative that the condensed language
used on form PO-1142 be clear, intelligible and
complete for communication to the applicant.

## SUGGESTIONS

(1) When examiner writes a significant por-
tion of the action on PO-1142, decides to make
a major change, rather than rewriting the ac-
tion, the PO-1142 should be completed and one
sheet used as a worksheet for having the action
typed.

(2) If an examiner's initial attempts at hand
written or printed actions are not deemed to be
easily readable, rather than assuming that all
of his actions should be typed, he should be en-
couraged to make further attempts, adjusting
his writing or printing by making the individ-
ual letters wider and by making all letters as
large as the space between the lines permits.

(3) All carbon copies of PO-1142 should be
checked for legibility before the action is
handed in for counting.

(4) When actions are returned by the Refer-
ence Processing Section (RPS) for correction,
they should be routed to the examiner by way
of the supervisory patent assistant (SPA) and
the supervisory primary examiner (SPE).

(5) When action returned from RPS with
copy indicating defect.

a. If feasible, correct (e.g., insert phone
number),

b. If not feasible to correct, use original
copy of returned PO-1142 as worksheet and
have new PO-1142 typed.

## INSTRUCTIONS

(1) PO-1142 can be used for actions on the
merits prior to the attorney's response to the
first action on the merits, as for example, a sup-
plemental action, the previous action being the
first action on the merits or for a first action
on the merits which is not the first action in
the case, but it should not be used for a second
action on the merits which is not made final
since the attorneys are expected to respond to
all actions by using the names of the references
rather than the capital letters used on PO-1142.
All other Office actions should also use the
names for the references. If a PO-1142 is used
for a supplemental action, the previous action

having been the first action on the merits, and
additional references are cited, begin the cita-
tion of the references on the new PO-892 on
the line having the letter following the last
letter used on the first PO-892 for that type of
reference.

(2) When using PO-1142, if the examiner
finds it necessary to cite more references on
PO-892 than is provided for on the form for
any of the three types of references, he should
use an additional PO-892 drawing a line
through the letters used to designate that type
of reference and to the left of these letters insert
V, W, X, Y, Z, as necessary.

(3) Prior to starting to write a rejection in
Column 4, if the examiner feels certain that he
will not have enough room in a single box in
that column, he should merely insert: "See
paragraph 6" (or another appropriate para-
graph number) and write the rejection in that
paragraph. If he has any doubts as to whether
the rejection will fit in the box, he should write
the rejection in the box. On reaching the last
line, if he finds that he will not have enough
room, at the end of that line he should write
"Continued in paragraph 6" (or another ap-
propriate paragraph no.) and finish the rejec-
tion in that paragraph. Under no circumstances
should a rejection started in column 4 of any of
the first five paragraphs be continued into the
next numbered paragraph of that column.

(4) When PO-1142 is the last page of the
action, the names, signatures, and telephone
number that appears at the end of a conven-
tional action should be placed in the box in the
lower right-hand corner of the form. The tele-
phone number should include area code 703 and
Patent and Trademark Office prefix 557 as well
as the examiner's extension.

(5) Examiners are never to fill out address
part of POL-326.

(6) In Col. 4, the references should always
be referred to by the appropriate letter. The
symbols appearing at the bottom of the form
should never be used in Column 4.

(7) When a section of U.S.C. is referred to
in Col. 2, it should always include 35 U.S.C. as
well as the section of the statute.

(8) Only capital letters representing refer-
ences and the symbols appearing at the bottom
of the form should appear in Col. 3. For ex-
ample, the examiner should not indicate in
Col. 3-

AvB
as applied
above
vD

(9) Reference citation form PO-892 should
be marked with the paper number to which it
is an attachment.

707.01

(10) Old forms POL-326 and PO-892
(dated earlier than 10-70), should never be used
with PO-1142 but they may be used with other
actions.

(11) The three parts of the action (forms
POL-326, PO-892 and PO-1142) should be
stapled together when finally placed in the file
wrapper.

## MOST FREQUENT DEFECTS

(1) No telephone number.

(2) Reference names used in Col. 4 and para-
graph 6.

(3) Writing or printing not easily readable :
Carbon too light
Printing too small or compressed
Handwriting not easily readable

(4) References merely described and not
combined in Column 4. [R-36]

## 707.01 Primary Examiner Indicates Action for New Assistant [R- 20]

After the search has been completed, action
is taken in the light of the references found.
Where the assistant examiner has been in the
Office but a short time, it is the duty of the
primary examiner to go into the case thor-
oughly. The usual procedure is for the assist-
ant examiner to explain the invention and
discuss the references which he regards as most

pertinent. The primary examiner may indi-
cate the action to be taken, whether restriction
or election of species is to be required, or
whether the claims are to be considered on
their merits. If action on the merits is to be
given, he may indicate how the references are
to be applied in cases where the claim is to be
rejected, or authorize allowance if it is not met
in the references and no further field of search
is known.

# 707.02(a) Cases Up for Third Action and Five-Year Cases [R-41]

The supervisory primary examiners should
impress their assistants with the fact that the
shortest path to the final disposition of an ap-
plication is by finding the best references on
the first search and carefully applying them.

The supervisory primary examiners are ex-
pected to personally check on the pendency of
every application which is up for the third or
subsequent official action with a view to finally
concluding its prosecution.

Any case that has been pending five years
should be carefully studied by the supervisory
primary examiner and every effort made to
terminate its prosecution. In order to accom-
plish this result, the case is to be considered
"special" by the examiner.

## 707.04 Initial Sentence [R-22]

The "First Page of Action" form POL-326
contains an initial sentence which indicates the
status of that action. as. "This application has
been examined" if it is the first action in the
case, or. "Responsive to communication filed
" Other papers received, such as sup-
plemental amendments. affidavits, new draw-
ings, etc .. should be separately mentioned.

A preliminary amendment in a new case
should be acknowledged by adding a sentence
such as "The amendment filed (date) has been
received."

## 707.05 Citation of References [R-25]

During the examination of an application the
examiner should eite appropriate prior art
which is nearest to the subject matter defined
in the claims. When such prior art is cited, its
pertinence should be explained.

All allowed applications should contain a
citation of the prior art for printing in the
patent. Only in rare instances involving
pioneer inventions, such as new chemical com-
pounds, would it be appropriate to send a case
to issue with no art eited. In the exceptional case
where no prior art is cited, the examiner must
write "None" on a form PO-892 and insert it in
the file wrapper. On the allowance of a con-
tinuation application where references have
been cited during the prosecution of the parent.
application, no additional citation of the prior
art is necessary. See § 1302.12:

In all continuing applications, the parent
applications should be reviewed for pertinent
prior art.

Rule 107. Citation of references. If domestic pat-
ents be cited, their numbers and dates, the names of
the patentees, and the classes of inventions must be
stated. If foreign patents be cited, their nationality
or country, numbers and dates, and the names of the
patentees must be stated. and such other data must be
furnished as may be necessary to enable the applicant
to identify the patents cited. In citing foreign pat-
ents. in case part only of the patent be involved, the
particular pages and sheets containing the parts relied
upon must be identified. If printed publications be
cited. the author (if any ), title, date, pages or plates,
and place of publication, or place where a copy can be
found. shall be given. When a rejection is based on
facts within the personal knowledge of an employee of
the Office. the data shall be as specific as possible, and
the reference must be supported. when called for by the
applicant, by the affidavit of such employee, and such
affidavit shall be subject to contradiction or explana-
tion by the affidavits of the applicant and other
persons.

TO SEPARATE, HOLD TOP AND BOTTOM EDGES, SNAP-APART AND DISCARD CARBON

FORM PO-692 U. S. DEPARTMENT OF COMMERCE

SERIAL NO.

GROUP ART. UNIT

ATTACHMENT

REV. 4/71 PATENT OFFICE

999,998

425

TO PAPER NUMBER

NOTICE OF REFERENCES CITED ☐ Check here if this is a supplemental citation. (Do not prepare an additional folder.)

APPLICANTIS) NOVEL et al

U. S. PATENTS

PATENT NO.

DATE

PATENTEE

CLASS

SUB- CLASS

FILING DATE IF APPROPRIATE

12091086

8-1937

TAYLOR

315

71 UX

82717874

9-1955

VERAIN

102 RX

C2572144

10-1951

HEALY

340

7/ X

D2137376

11-1938

ALTORFER

DIG. 2

E2703912

7 -1946

DOLL

100

269 BUX

FPP.

2400

5-1964

BOERNER

Plant

G1671843

5-1928

SCOTT

104.01 R

HD219366

12-1970

LEWIS Jr. et al

6-26-1969

13143

8-1964

PEARSON et al

100

258 A

IRe18406

4-1932

MARINSKY

205.16 C

XK3035319

5-1962

WOLFF

274 W8 X

FOREIGN PATENTS OR PUBLISHED APPLICATIONS

PATENT NO.

DATE

COUNTRY

NAME

CLASS

SUB- CLASS

PERTINENT

SHT 5. DWG

PP. SPEC.

136/13

1-1950

AUSTRALIA

PAPER PRODUCTS

134 QA

MA34622

11-1934

FRANCE

LORENZ

15 R

14-7

19421

of 1913

GREAT BRITAIN

CROSSE

51.5

01345890

7-1963

GERMANY

MUTHER

683125

3-1964

CANADA

FISHBURNE

100

216

1-5/1-19

OTHER REFERENCES (Including Author, Title, Date, Pertinent Pages, Etc.)

JONES, Def. Pub. of Serial No. 30, 226, filed 4-20-10, published

in 881 0.6. 21 on 12-1-1990, Defensive Publication No. 7881, 002, 96-1.6

(500840001) WINSLOW, C.E.A., Fresh Air and Ventilation, E.P. Dutton,

N.Y., 1926, p. 97-112, TH 7653 W5 , 315-22

Ballistic Missile &amp; Aerospace Technology, Vol. 3, Academic

Press, N.Y., 1964, TL 18759, p. 199, 250-108

Carbowax &amp; Polyethylene Glycols, Carbide Chemical

Corporation, 1946, p. 5, Copy in Group 120 Library

EXAMINER Jane Searcher

DATE 7-15-74

☐ CHECK HERE IF FOREIGN EXCHANGE

· ATTENTION R. O. B .: Do not furnish copy if this box is checked.

### 707.05 (a) Copies of Cited References Provided by Reference Processing Section [R-45]

Copies of cited references (except as noted
below) are automatically furnished without
charge to applicant together with the Office ac-
tion in which they are cited. Copies of the cited
references are also placed in the application file
for use by the examiner during the prosecution.

Copies of references which are cited at the
time of allowance, in Ex parte Quayle actions,
and by applicant in accordance with §§ 707.05
(b) and 708.02 are not furnished to applicant
with the Office action. Additionally, copies of
references cited in continuation applications if
they had been previously cited in the parent
application are not furnished. The examiner
should check the left hand column of form PO-
892 if a copy of the reference is not to be furn-
ished to the applicant.

In the rare instance where no art is cited in
a continuation application, all the references
cited during the prosecution of the parent appli-
cation will be listed at allowance for printing
in the patent.

This service is furnished by the Reference
Processing Section (R.P.S.) which is in charge
of (1) ordering copies of the cited U.S. patents:
(2) mailing the action with one copy of each
cited reference and (3) after mailing, returning
to the group the ribbon copy of the mailed ac-
tion together with a copy of each reference to be
placed in the application file.

To assist in providing this service, the exam-
iner should :

(a) Write the citation of the references on
form PO-892, "Notice of References Cited".

(b) Place the original copy of PO-892 in the
file wrapper and give to the clerk with the com-
pleted Office action for counting.

(c) Write the application serial number on
the plastic index tab of a special folder. Insert
into the folder both carbon copies of PO-892
together with two copies of any foreign and
other references cited in the action. Such copies
of the foreign patents and publications should
be made by the Copying Center. Do not enclose
any U.S. patents.

(d) Place the folder in the "Out Box for
R.P.S."

Form PO-892 is completed and the folder
prepared and forwarded to R.P.S. in all cases
in which a reference is to be provided, regard-
less of the type reference cited.

If special handling is desired, a "special"
sticker should be attached to the top of the
folder.

Jumbo U.S. patents (those having more than
40 pages of specification and drawings) will be
furnished to the applicant, but will not be placed
in the application file. A tab card stamped
"Jumbo Patent" will be inserted in the file to
account for the missing reference.

Detailed instructions regarding the above
outlined procedure, and the procedure to be
followed in correcting an Office action prior to
mailing are found in Chapter 400 of the Manual
of Clerical Procedures.

In the case of design applications, procedures
are the same as set forth in section 707.05 (a)-
(g) except that less than the entire disclosure
of a cited patent may be supplied with the ac-
tion by the Design group. Copies of all sheets of
drawings and of the first page of the specifica-
tion of cited patents are furnished without
charge. Any other subject matter relied on by
the examiner will also be provided without
charge. Where an applicant desires a complete
copy of a patent it may be obtained through
the Customer Services Division at the usual
charge.

#### 707.05(b) Citation of Prior Art by Applicants [R-45]

This section sets forth positive guidelines
for applicants, their attorneys and agents who
desire to submit prior art for consideration by
the Patent and Trademark Office. Such cita-
tions of relevant art are welcomed and are en-
couraged. In order that they may be most effec-
tively considered by the examiner, however, with
as little disruption of the regular examination
process as possible, it is requested that they be
submitted in accordance with the following
guidelines.

(1) Citations should be submitted within
three months after the application filing date if
possible. Any citation made after the first ac-
tion on the merits (if this occurs more than
three months after filing) should be accom-
panied by an explanation of why it was not
earlier presented. This may take the form of a
statement that it was made as soon as the art
or other material was discovered, or as soon as
its pertinency was appreciated, indicating the
date of discovery of the cited material or its
pertinency.

(2) Full text copies of the pertinent portions
of all such prior art citations or other material
relevant to patentability of the claimed inven-
tion should be supplied, whether the citation is
made in a separate paper or in the specification
of the application. This will be unnecessary in
the case of pending or abandoned United States
applications (e.g. Defensive Publications). In

#### MANUAL OF PATENT EXAMINING PROCEDURE

the case of publications, a copy of the title page,
its copyright notice or other indication of a pub-
lication date, and copies of the entire pages
which contain the text of the relevant material
will be sufficient.

Also, where the applicant has submitted prior
art in accordance with this section in a prior
application, reference to the prior application
and the submission of the prior art therein will
be sufficient for the continuing application.
However, any change in applicant's position
regarding the cited art and its relevancy to the
claimed subject matter should be indicated.

While patent copies are, of course, available
in the Patent and Trademark Office, failure of
the applicant to include copies of the cited art
means that the examiner must interrupt his ex-
amination until copies can be ordered and re-
ceived. Since the person making the citation will
have copies in hand, an overall saving in time
and more expeditious examination will result if
copies are supplied with the citation.

(3) If the reference is not in English, a
translation of its pertinent portions should be
included. Alternatively, in lieu of a translation,

a copy of an equivalent English language pat-
ent or publication may be provided, if it is
identified as being an equivalent.

(4) Accompanying each citation should be
an indication of its pertinency to the claimed
subject matter, together with any reasons ap-
plicant may wish to point out why the claims
are considered to be patentable over the cited
material.

All citations of prior art or other material
submitted in accordance with the above guide-
lines and submitted before all claims have been
indicated as allowable will be fully considered
by the examiner.

While the Patent and Trademark Office will
not knowingly ignore any prior art which might
anticipate or suggest the claimed invention, no
assurance can be given that cited art or other
material not submitted in accordance with these
guidelines will be considered by the examiner.
Consequently, any patent issuing on the appli-
cation in question would not be expected to be
accorded the usual presumption of validity with
respect to such cited art or material.

707.05(d)

After the claims have been indicated as allow-
able by the examiner, e.g., by the mailing of an
Ex parte Quayle action, a notice of allowability
(POL-327), an examiner's amendment (POL-
37), or a Notice of Allowance, any citations sub-
mitted will be placed in the file. Since prosecu-
tion has ended, however, such submissions will
not ordinarily be considered by the examiner
unless the citation is accompanied by :INA:

(a) A proposed amendment cancelling or
further restricting at least one independent
claim and narrowing the scope of protection
sought;

(b) A timely affidavit under Rule 131 (37
CFR 1.131) with respect to the material cited;
or

(c) A statement by the applicant or his at-
torney or agent that, in the judgment of the
person making the statement, the prior art or
other material cited raises a serious question as
to the patentability of the claimed subject mat-
ter.

If the material is submitted after the base is-
sue fee has been paid, it must also be accom-
panied by a petition under Rule 183 (37 CFR
1.183) requesting a waiver of Rule 312 (37 CFR
1.312). Such petition, if granted, would result
in review of the art by the examiner and pos-
sible entry of the amendment.

Submitted citations will not in any way
diminish the obligation of examiners to conduct
independent prior art searches, or relieve ex-
aminers of citing pertinent prior art of which
they may be aware, whether or not such art is
cited by the applicant. Nothing in this section is
intended to relieve applicants of any respon-
sibility they may have to cite known prior art
to the Patent and Trademark Office.

If the specification or a separate paper filed in
the application contains citations relating to
background material, applicant has the respon-
sibility of determining whether or not such
material is sufficiently relevant to the claimed
invention that full compliance with these guide-
lines is necessary.

Prior art submitted by applicant in the man-
ner provided herein will not be supplied with
an Office action, but will be listed on the form
PO-892, "Notice of References Cited." along
with other prior art relied upon by the examiner
during the examination. Accordingly. the ex-
aminer should check the space on form PO-
892 to indicate that no copy of that reference
need be furnished to the applicant. Only that
prior art listed by the examiner on form PO-
892 will be printed on the patent.

However, if the prior art is submitted in a
manner which does not comply with this section.
it is not necessary to list all cited prior art on
form PO-892 in order to make the citations of

record. This is because the complete listing of
applicant's citations will be in the application
file and will be available for inspection by the
public after issuance of the patent. The exami-
ner may state that he has considered all the prior
art cited by applicant, even if it was submitted
in a manner which does not fully comply with
the requirements of this section.

Citations of prior art may be placed of record
in the patented file after the grant of the patent
at the request of the patentee (see Section
100(d) of Title 35, United States Code, for
definition of patentee). Any such submissions
by the patentee will be placed in the patented
file without comment by the Patent and Trade-
mark Office. Citations submitted to the Patent
and Trademark Office by third parties will not
be placed in the record of a patented file unless
the party submitting the art certifies that he has
sent the owner of record copies of the cited art
and of his letter transmitting it to the Patent
and Trademark Office.

#### 707.05 (c) Order of Listing [R-4]]

In citing references for the first time, the
identifying data of the citation should be
placed on form PO-892 "Notice of References
Cited", a copy of which will be attached to the
Office action. No distinction is to be made be-
tween references on which a claim is rejected and
those formerly referred to as "pertinent". With
the exception of applicant submitted citations
(§§ 707.05(b) and 708.02), the pertinent fea-
tures of references which are not used as a basis
for rejection, shall be pointed out briefly.

See § 1302.12.

#### 707.05(d) Reference Cited in Subse- quent Actions

Where an applicant in an amendatory paper
refers to a reference which is subsequently
relied upon by the examiner, such reference
shall be cited by the examiner in the usual
manner.

#### MANUAL OF PATENT EXAMINING PROCEDURE

##### 707.05(e) Data Used in Citing Refer- ences [R-45]

Rule 107 (§§ 707.05 and 901.05(a) ) requires
the examiner to give certain data when citing
references. The patent number, patent date,
name of the patentee, class and subclass, and the
filing date, if appropriate, must be given in the
citation of U.S. patents. This information is
listed on the "Notice of References Cited" form
PO-892 (Copy at § 707.05). See § 901.04 for de-
tails concerning the various series of U.S. pat-
ents and how to cite them. Note that patents of
the X-Series (dated prior to July 4, 1836) are
not to be cited by number. Some U.S. patents
issued in 1861 have two numbers thereon. The
larger number should be cited.

If the patent date of a U.S. patent is after
and the effective filing date of the patent is
before the effective U.S. filing date of the ap-
plication, the filing date of the patent must be
set forth along with the citation of the patent.
This calls attention to the fact that the par-
ticular patent relied on is a reference because
of its filing date and not its patent date. Simi-
larly, when the reference is a continuation-in-
part of an earlier-filed application which dis-
closes the anticipatory matter and it is neces-
sary to go back to the earlier filing date, the
fact that the subject matter relied upon was
originally disclosed on that date in the first
application should be stated.

In the rare instance where no art is cited in a
continuation application, all the references cited
during the prosecution of the parent application
will be listed at allowance for printing in the
patent. See § 707.05 (a).

###### CROSS-REFERENCES

Official cross-references should be marked
"X" and unofficial cross-references "UX".
☒

FOREIGN PATENTS AND PUBLISHED APPLICATIONS

In citing foreign patents, the patent number,
citation date, name of the country, name of the
patentee, and class and subclass must be given.

In actions where references are furnished, and
(1) less than the entire disclosure is relied upon,
the sheet and page numbers specifically relied
upon and the total number of sheets of drawing
and pages of specification must be included
(except applicant submitted citations) ; (2) the
entire disclosure is relied upon, the total number
of sheets and pages are not included, and the
appropriate columns on PO-892 are left blank.

Publications such as German allowed ap-
plications and Belgian and Netherlands printed
specifications should be similarly handled. If
the total number of sheets and pages in any
publication to be furnished (other than U.S.
patents) exceeds 15, the authorizing signa-
ture of the supervisory primary examiner is
required. Applicants who desire a copy of the
complete foreign patent or of the portion not
"relied on" must order it in the usual manner.

See § 901.05 (a) for a chart in which foreign
language terins indicative of foreign patent and
publication dates to be cited are listed.

#### PUBLICATIONS

See § 711.06(a) for citation of abstracts,
abbreviatures and defensive publications. See
§ 901.06(c) for citation of Alien Property Cus-
todian publications.

In citing a publication, sufficient information
should be given to determine the identity and
facilitate the location of the publication. The
data required by rule 107 (§ 707.05) with
the specific pages relied on identified together
with the SCIENTIFIC LIBRARY call num-
ber will suffice. The call number appears on the
"spine" of the book if the book is thick enough
and, in any event, on the back of the title page.
Books on interlibrary loan will be marked
with the call number of the other library, of
course. THIS NUMBER SHOULD NOT BE
CITED. If the copy relied upon is located
only in the group making the action (there
may be no call number), the additional infor-
mation, "Copy in Group -" should be given.

Examples of nonpatent bibliographical cita-
tions:
Winslow, C. E. A. Fresh Air and Ventila-
tion. N.Y., E. P. Dutton, 1926. p. 97-112.
TH7653.W5.

Singer, T. E. R. Information and Communi-
cation Practice in Industry. N.Y., Reinhold,
1958. Chapter 8, p. 157-165, by J. F. Smith,
Patent Searching. T175.S5.

Machinery's Handbook, 16th ed. N.Y., In-
dustrial Press, 1959. p. 1526-1527. TJ151.M3
1959. shinn et trammetipsy Lanmol vous modli

Calvert, R. Patents (Patent Law). In En-
cyclopedia of Chemical Technology, ed. by R. E.
Kirk and D. F. Othmer. N.Y., Interscience
Encyclopedia. Vol. 9, 1952, p. 868-890. TP9.
E68.

Hine, J. S. Physical Organic Chemistry.
N.Y., McGraw-Hill, 1956, p. 81. QD476.H5.

Noyes, W. A., Jr. A Climate for Basic Chem-
ical Research. In Chem. & Eng. News. 38(42) :
p. 91-95. Oct. 17, 1960. TP1.1418.

NOTE: In this citation, 38 is the volume num-
ber, 42 the issue number, and 91-95 the page
numbers.net

If the original publication is located outside
the Office, the examiner should immediately
order a photocopy of at least the portion relied
upon and indicate the class and subclass in
which it will be filed. The Office action MUST
designate this class and subclass.

Whenever, in citing references anywhere in
the application file the titles of periodicals are
abbreviated, the abbreviations of titles used in
Chemical Abstracts and printed in the list of
periodicals abstracted by Chemical Abstracts
should be adopted with the following excep-
tions: (1) the abbreviation for the Berichte der
Deutschen Chemischen Gesellschaft should be
Ber. Deut. Chem. rather than Ber., and (2)
where a country or city of origin is a necessary
part of a complete identification, the country or
city of origin should be added in parentheses;
e.g., J. Soc. Chem. Ind. (London).

# 707.05 (f) Effective Dates of Declassi- fied Printed Matter [R- 31]

In using declassified material as references
there are usually two pertinent dates to be con-
sidered, namely, the printing date and the pub-
lication date. The printing date in some in-
stances will appear on the material and may be
considered as that date when the material was
prepared for limited distribution. The publi-
cation date is the date of release when the ma-
terial was made available to the public. See Ex

parte Harris et al., 79 USPQ 439. If the date
of release does not appear on the material, this
date may be determined by reference to the
Office of Technical Services, Department of
Commerce.

In the use of any of the above noted mate-
rial as an anticipatory publication, the date of
release following declassification is the effec-
tive date of publication within the meaning
of the statute.

For the purpose of anticipation predicated
upon prior knowledge under 35 U.S.C. 102(a)
the above noted declassified material may be
taken as prima facie evidence of such prior
knowledge as of its printing date even though
such material was classified at that time.
When so used the material does not constitute
an absolute statutory bar and its printing date
may be antedated by an affidavit or declaration
under rule 131.

707.05(g) Incorrect Citation of Ref-
erences
[R-36]

Where an error in citation of a reference is
brought to the attention of the Office by appli-
cant, a letter correcting the error and restarting
the previous period for response, together with
a correct copy of the reference, is sent to appli-
cant. Where the error is discovered by the ex-
aminer, applicant is also notified and the period
for response restarted. In either case, the ex-
aminer is directed to correct the error, in ink,
in the paper in which the error appears, and
place his initials on the margin of such paper,
together with a notation of the paper number
of the action in which the citation has been cor-
rectly given. See § 710.06.

Form POL-316 is used to correct an erro-
neous citation or an erroneously furnished
reference. Clerical instructions are outlined in
the Manual of Clerical Procedures, § 410.C
(2) and (3).

In any case otherwise ready for issue, in
which the erroneous citation has not been for-
mally corrected in an official paper, the ex-
aminer is directed to correct the citation on an
examiner's amendment form POL-37.

If a FOREIGN patent is incorrectly cited ;
for example, the wrong country is indicated
or the country omitted from the citation, the
General Reference Branch of the Scientific
Library may be helpful. The date and num-
ber of the patent are often sufficient to deter-
mine the correct country which granted the
patent.

To correct a citation prior to mailing, either
before or after sending the typed action to
Reference Processing Unit (R.P.U.), see the
Manual of Clerical Procedures, § 410.C(1).

## 707.06 Citation of Decisions, Orders, Memorandums and Notices [R-36]

In citing court decisions, the U.S., C.C.P.A.
or Federal Reporter citation should be given
in addition to the USPQ citation, when it is
convenient to do so.

The citation of manuscript decisions which
are not available to the public should be
avoided.

In citing a manuscript decision which is
available to the public but which has not been
published, the tribunal rendering the decision
and complete data identifying the paper should
be given. Thus, a decision of the Board of
Appeals which has not been published but
which is available to the public in the patented
file should be cited, as "Ex parte ____ , deci-
sion of the Board of Appeals, Patent No.
paper No.
pages."

Decisions found only in patented files should
be cited only when there is no published deci-
sion on the same point.

When a Commissioner's order, notice or
memorandum not yet incorporated into this
manual is cited in any official action, the title
and date of the order, notice or memorandum
should be given. When appropriate other data,
such as a specific issue of the Journal of the
Patent Office Society or of the Official Gazette
in which the same may be found, should also be
given.

# 707.07 Completeness and Clarity, of Examiner's Action [R-31]

Rule 105. Completeness of examiner's action. The
examiner's action will be complete as to all matters,
except that in appropriate circumstances, such as mis-
joinder of invention, fundamental defects in the appli-
cation, and the like, the action of the examiner may be
limited to such matters before further action is made.
However, matters of form need not be raised by the ex-
aminer until a claim is found allowable.

# 707.07(a) Complete Action on Formal Matters [R-36]

Forms are placed in informal applications
listing informalities noted by the Draftsman

(Form PO-948) and the Application Division
(Form PO-152). Each of these forms
comprises an original for the file record
and a copy to be mailed to applicant as a
part of the examiner's first action. They are spe-
cifically referred to as attachments to the letter
and are marked with its paper number. In
every instance where these forms are to be used
they should be mailed with the examiner's first
letter, and any additional formal requirements
which the examiner desires to make should be
included in the first letter.

When any formal requirement is made in an
examiner's action, that action should, in all
cases where it indicates allowable subject mat-
ter, call attention to rule 111 (b) and state that
a complete response must either comply with
all formal requirements or specifically traverse
each requirement not complied with.

# 707.07(b) Requiring New Oath [R-31]

See § 602.02.

707.07(c)
Draftsman's Requirement
[R-36]

See § 707.07(a); also §§ 608.02(a), (e),
and (s).

707.07(d)
Language To Be Used In
Rejecting Claims [R-36]

Where a claim is refused for any reason re-
lating to the merits thereof it should be "re-
jected" and the ground of rejection fully and
clearly stated, and the word "reject" must be
used. The examiner should designate the
statutory basis for any ground of rejection by
express reference to a section of 35 U.S.C. in the
opening sentence of each ground of rejection.
If the claim is rejected as too broad, the reason
for so holding should be given; if rejected as
indefinite the examiner should point out where-
in the indefiniteness resides; or if rejected as in-
complete, the element or elements lacking should
he specified, or the applicant be otherwise ad-
vised as to what the claim requires to render it
complete.

See § 706.02 for language to be used.

Everything of a personal nature must be
avoided. Whatever may be the examiner's
view as to the utter lack of patentable merit
in the disclosure of the application examined,
he should not express in the record the opinion
that the application is, or appears to be, devoid
of patentable subject matter. Nor should he
express doubts as to the allowability of allowed
claims or state that every doubt has been re-
solved in favor of the applicant in granting
him the claims allowed.

Although, not every ground of rejection may
be categorically related to a specific section of
the statute, § 112 is considered as the more
apt section for old combination rejection than
§§ 102 or 103. Ex parte Des Granges, 864
O.G. 712.

The examiner should, as a part of the first
Office action on the merits, identify any claims
which he judges, as presently advised, to be
allowable and/or should suggest any way in
which he considers that rejected claims may be
amended to make them allowable. If the ex-
aminer does not do this, then by implication it
will be understood by the applicant or his attor-
ney or agent that in the examiner's opinion, as
presently advised, there appears to be no allow-
able claim nor anything patentable in the sub-
ject matter to which the claims are directed.

IMPROPERLY EXPRESSED REJECTIONS

An omnibus rejection of the claim "on the
references and for the reasons of record" is
stereotyped and usually not informative and
should therefore be avoided. This is especially
true where certain claims have been rejected
on one ground and other claims on another
ground.

A plurality of claims should never be
grouped together in a common rejection, unless
that rejection is equally applicable to all claims
in the group.

# 707.07(e) Note All Outstanding Re- quirements

In taking up an amended case for action the
examiner should note in every letter all the
requirements outstanding against the case.
Every point in the prior action of an exam-
iner which is still applicable must be repeated
or referred to, to prevent the implied waiver
of the requirement.

As soon as allowable subject matter is found,
correction of all informalities then present
should be required.

# 707.07(f) Answer All Material Tra- versed

Where the requirements are traversed, or
suspension thereof requested, the examiner
should make proper reference thereto in his
action on the amendment.

Where the applicant traverses any rejection,
the examiner should, if he repeats the rejec-
tion, take note of the applicant's argument and
answer the substance of it.

If a rejection of record is to be applied to
a new or amended claim, specific identification
of that ground of rejection, as by citation of
the paragraph in the former Office letter in
which the rejection was originally stated,
should be given.

# ANSWERING ASSERTED ADVANTAGES

After an Office action, the response (in addi-
tion to making amendments, etc.) may fre-
quently include arguments and affidavits to the
effect that the prior art cited by the examiner
does not teach how to obtain or does not in-
herently yield one or more advantages (new
or improved results, functions or effects),
which advantages are urged to warrant issue
of a patent on the allegedly novel subject mat-
ter claimed.

If it is the examiner's considered opinion
that the asserted advantages are without sig-
nificance in determining patentability of the
rejected claims, he should state the reasons for
his position in the record, preferably in the
action following the assertion or argument
relative to such advantages. By so doing the
applicant will know that the asserted ad-
vantages have actually been considered by the
examiner and, if appeal is taken, the Board of
Appeals will also be advised.

The importance of answering such argu-
ments is illustrated by In re Herrmann et al.,
1959 C.D. 159; 739 O.G. 549 where the appli-
cant urged that the subject matter claimed
produced new and useful results. The court
noted that since applicant's statement of ad-
vantages was not questioned by the examiner
or the Board of Appeals, it was constrained
to accept the statement at face value and there-
fore found certain claims to be allowable.

# 707.07(g) 707.07(g) Piecemeal Examination [R-31]

Piecemeal examination should be avoided
as much as possible. The examiner ordi-
narily should reject each claim on all valid
grounds available, avoiding, however, undue
multiplication of references. (See § 904.02.)
Major technical rejections on grounds such as
lack of proper disclosure, undue breadth,
serious indefiniteness and res judicata should
be applied where appropriate even though
there may be a seemingly sufficient re-
jection on the basis of prior art. Where a major
technical rejection is proper, it should be stated
with a full development of reasons rather than
by a mere conclusion coupled with some stereo-
typed expression.

In cases where there exists a sound rejection
on the basis of prior art which discloses the
"heart" of the invention (as distinguished from
prior art which merely meets the terms of the
claims), secondary rejections on minor technical
grounds should ordinarily not be made. Certain
technical rejections (e.g. negative limitations,
indefiniteness) should not be made where the
examiner, recognizing the limitations of the
English language, is not aware of an improved
mode of definition. wo of wod dom bon auch

Some situations exist where examination of an
application appears best accomplished by limit-
ing action on the claims thereof to a particular
issue. These situations include the following :

(1) Where an application is too informal for
a complete action on the merits; see § 702.01;

(2) Where there is an undue multiplicity of
claims, and there has been no successful tele-
phone request for election of a limited number
of claims for full examination ; see § 706.03 (1) ;

(3) Where there is a misjoinder of inven-
tions and there has been no successful telephone
request for election ; see §§ 803, 806.02, 812.01;

(4) Where the disclosure is directed to per-
petual motion; note ex parte Payne, 1904 C.D.
42; 108 O.G. 1049.

However, in such cases, the best prior art readily
available should be cited and its pertinancy
pointed out without specifically applying it to
the claims.

On the other hand, a rejection on the grounds
of res judicata, no prima facie showing for re-
issue, new matter, or inoperativeness (not
involving perpetual motion) should be accom-
plished by rejection on all other available
grounds.

707.07(h) Notify of Inaccuracies in
Amendment [R-27]

See § 714.23.

# 707.07(i) Each Claim To Be Men- tioned in Each Letter [R- 31]

In every letter each claim should be men-
tioned by number, and its treatment or status
given. Since a claim retains its original nu-
meral throughout the prosecution of the case,
its history through successive actions is thus
easily traceable. Each action should conclude
with a summary of all claims presented for
examination.

Claims retained under rule 142 and claims
retained under rule 146 should be treated as
set out in §§ 821 to 821.03 and 809.02(c).

See § 1109.02 for treatment of claims in the
application of losing party in interterence.

The Index of Claims should be kept up to
date as set forth in § 717.04.

# 707.07 (j) State When Claims Are Al- lowable [R-20]

## INVENTOR FILED APPLICATIONS

When, during the examination of a pro se
case, it becomes apparent to the examiner that
there is patentable subject matter disclosed in
the application, he shall draft one or more
claims for the applicant and indicate in his
action that such claims would be allowed if in-
corporated in the application by amendment.

This practice will expedite prosecution and
offer a service to individual inventors not repre-
sented by a registered patent attorney or agent.

Although this practice may be desirable and
is permissible in any case where deemed appro-
priate by the examiner, it will be expected to
be applied in all cases where it is apparent that
the applicant is unfamiliar with the proper pre-
paration and prosecution of patent applications.

## ALLOWABLE EXCEPT AS TO FORM

When an application discloses patentable
subject matter and it is apparent from the
claims and the applicant's arguments that the
claims are intended to be directed to such
patentable subject matter, but the claims in
their present form cannot be allowed because
of defects in form or omission of a limitation,
the examiner should not stop with a bare ob-
jection or rejection of the claims. The exami-
ner's action should be constructive in nature
and when possible he should offer a definite
suggestion for correction. Further, an exam-
iner's suggestion of allowable subject matter
may justify his indicating the possible desira-
bility of an interview to accelerate early agree-
ment on allowable claims.

If the examiner is satisfied after the search
has been completed that patentable subject
matter has been disclosed and the record indi-
cates that the applicant intends to claim such
subject matter, he may note in the Office action
that certain aspects or features of the patent-
able invention have not been claimed and that
if properly claimed such claims may be given
favorable consideration.

If a claim is otherwise allowable but is de-
pendent on a cancelled claim or on a rejected
claim, the Office action should state that the
claim would be allowable if rewritten in inde-
pendent form.

## EARLY ALLOWANCE OF CLAIMS

Where the examiner is satisfied that the
prior art has been fully developed and some of
the claims are clearly allowable, he should not
delay the allowance of such claims.

## 707.07 (k) Numbering Paragraphs

It is good practice to number the paragraphs
of the letter consecutively. This facilitates
their identification in the future prosecution of
the case.

## 707.08 Reviewing and Initialing by As- sistant Examiner [R-24]

The full surname of the examiner who pre-
pares the Office action will, in all cases, be typed
below the action on the left side. The telephone
number below this should be called if the case
is to be discussed or an interview arranged.

After the action is typed, the examiner who
prepared the action reviews it for correctness.
If this examiner does not have the authority
to sign the action, he should initial above the
typed name, and forward the action to the au-
thorized signatory examiner for signing.

## 707.09 Signing by Primary or Other Authorized Examiner [R-31]

Although only the original is signed, the word
"Examiner" and the name of the signer
should appear on the original and copies.

All letters and issues should be signed
promptly.

### 707.10 Entry [R-16]

The original, signed by the authorized ex-
aminer, is the copy which is placed in the file
wrapper. The character of the action, its paper
number and the date of mailing are entered in
black ink on the outside of the file wrapper
under "Contents".

# 707.11 Date

The date should not be typed when the
letter is written, but should be stamped on all
copies of the letter after it has been signed
by the authorized signatory examiner and the
copies are about to be mailed.

# 707.12 Mailing [R-20]

In cases where no references are to be pro-
vided by Reference Order Section (R.O.S.), the
copies are mailed by the group after the orig-
inal, initialed by the assistant examiner and
signed by the authorized signatory examiner,
has been placed in the file.

In cases where cited references are to be pro-
vided, the original and copies after signing are
forwarded by the clerk to Reference Order Sec-
tion (R.O.S.) for mailing. The file with a copy
of the action is retained in the group. After
the copies are mailed by R.O.S., the original is
returned for placement in the file.

# 707.13 Returned Office Action

Letters are sometimes returned to the Office
because the Post Office has not been able to de-
liver them. The examiner should use every
reasonable means to ascertain the correct ad-
dress and forward the letter again, after
stamping it "remailed" with the date thereof
and redirecting it if there be any reason to
believe that the letter would reach applicant
at such new address. If the Office letter was
addressed to an attorney, a letter may be writ-
ten to the inventor or assignee informing him
of the returned letter. The period running
against the application begins with the date of
remailing. (Ex parte Gourtoff, 1924 C.D. 153;
329 O.G. 536.)

If the Office is not finally successful in de-
livering the letter, it is placed, with the en-
velope, in the file wrapper. If the period dat-
ing from the remailing elapses with no com-
munication from applicant, the case is for-
warded to the Abandoned Files Unit.

# 708 Order of Examination [R-31]

Rule 101. Order of examination. (a) Applications
filed in the Patent Office and accepted as complete ap-
plications (rules 53 and 55) are assigned for examina-
tion to the respective examining groups having the
classes of inventions to which the applications relate.
Applications shall be taken up for examination by the
examiner to whom they have been assigned in the or-
der in which they have been filed except for those appli-
cations in which the Office has accepted a request
under rule 139.

(b) Applications which have been acted upon by
the examiner, and which have been placed by the ap-
plicant in condition for further action by the examiner
(amended applications) shall be taken up for action
in such order as shall be determined by the Commis-
sioner.

Each examiner will give priority to that ap-
plication in his docket, whether amended or new,
which has the oldest effective U.S. filing date.
Except as rare circumstances may justify group
directors in granting individual exceptions,
this basic policy applies to all applications.

The actual filing date of a continuation-in-
part application is used for docketing purposes.
However, the examiner may act on a continu-
ation-in-part application by using the effective
filing date, if he desires.

If at any time an examiner determines that
the "effective filing date" status of any appli-
cation differs from what the records show, he
should so inform the clerk, who should promptly
amend the records to show the correct status,
with the date of correction.

The order of examination for each examiner
is to give top priority to those special cases
having a fixed 30 day due date, such as ex-
aminer's answers and decisions on motions.
Most other cases in the "special" category (for
example, reissues, interference cases, cases made
special by petition, cases ready for final con-
clusion, etc.) will continue in this category, with
the first effective U.S. filing date among them
normally controlling priority.

All amendments before final rejection should
be responded to within 30 days of receipt.

Action on those applications in which the
Office has accepted a request under rule 139 is
suspended for the entire pendency, except for

purposes relating to interference proceedings
under rule 201(b) initiated within (5) five
years of the earliest effective U.S. filing date.

# 708.01 List of Special Cases [R-24]

Rule 102. Advancement of examination. (a) Appli-
cations will not be advanced out of turn for examina-
tion or for further action except as provided by these
rules, or upon order of the Commissioner to expedite
the business of the Office, or upon a verified showing
which, in the opinion of the Commissioner, will justify
so advancing it.

(b) Applications wherein the inventions are deemed
of peculiar importance to some branch of the public
service and the head of some department of the Gov-
ernment requests immediate action for that reason, may
be advanced for examination.

Certain procedures by the examiners take
precedence over actions even on special cases.

For example, all papers typed and ready for
signature should be completed and mailed.

All issue cases returned with a "Printer Wait-
ing" slip must be processed and returned within
the period indicated.

Cases in which practice requires that the
examiner act within 30 days, such as decisions
on motion (§ 1105.06) and examiner's answers
(§ 1208), necessarily take priority over special
cases without specific time limits.

If an examiner has a case which he is satis-
fied is in condition for allowance, or which he
is satisfied will have to be finally rejected, he
should give such action forthwith instead of
making the case await its turn.

The following is a list of special cases (those
which are advanced out of turn for examina-
tion) :

(a) Applications wherein the inventions are
deemed of peculiar importance to some branch
of the public service and when for that reason
the head of some department of the Govern-
ment requests immediate action and the Com-
missioner so orders (rule 102).

(b) Cases made special as a result of a peti-
tion. (See § 708.02.)

Subject alone to diligent prosecution by the
applicant, an application for patent that has
once been made special and advanced out of
turn for examination by reason of a ruling
made in that particular case (by the Commis-
sioner or an Assistant Commissioner) will con-
tinue to be special throughout its entire course
of prosecution in the Patent Office, including
appeal, if any, to the Board of Appeals; and
any interference in which such an application
becomes involved shall, in like measure, be
considered special by all Patent Office officials
concerned.

(d) Cases remanded by an appellate tribunal
for further action.

(e) A case, once taken up for action by an
examiner according to its effective filing date,
should be treated as special by any examiner,
art unit or group to which it may subsequently
be transferred; exemplary situations include
new cases transferred as the result of a tele-
phone election and cases transferred as the re-
sult of a timely response to any official action.

(f) Applications which appear to interfere
with other applications previously considered
and found to be allowable, or which it is de-
manded shall be placed in interference with an
unexpired patent or patents (rule 201).

(g) Cases ready for allowance, or ready for
allowance except as to formal matters.

(h) Cases which are in condition for final
rejection.

(i) Cases pending more than five years,
including those which, by relation to a prior
United States application, have an effective
pendency of more than five years. See
§ 707.02(a).

See also §§ 714.13 and 1207.

# 708.02 Petition to Make Special [R- 39]

New applications ordinarily are taken up for
examination in the order of their effective
United States filing dates. Certain exceptions
are made by way of petitions to make special,
which may be granted under the conditions set
forth below.

# I. MANUFACTURE

An application may be made special on the
ground of prospective manufacture upon the
filing of a petition by the applicant or assignee
alleging under oath or declaration :

1\. The possession by the prospective manu-
facturer of sufficient presently available capital
(stating approximately the amount) and facili-
ties (stating briefly the nature thereof) to
manufacture the invention in quantity or that
sufficient capital and facilities will be made
available if a patent is granted;

If the prospective manufacturer is an in-
dividual, there must be a corroborating affidavit
from some responsible party, as for example,
an officer of a bank, showing that said in-
dividual has the required available capital to
manufacture;

2\. That the prospective manufacturer will
not manufacture, or will not increase present
manufacture, unless certain that the patent will
be granted;

3\. That affiant obligates himself or the pro-
spective manufacturer, to manufacture the in-
vention, in the United States or its possessions,
in quantity immediately upon the allowance of
claims or issuance of a patent which will protect
the investment of capital and facilities.

The attorney or agent of record in the appli-
cation (or applicant, if not represented by an
attorney or agent) must file an affidavit or
declaration to show :

1\. That he has made or caused to be made a
careful and thorough search of the prior art, or
has a good knowledge of the pertinent prior art;
and

2\. That he believes all of the claims in the
application are allowable.

# II. INFRINGEMENT

Subject to a requirement for a further show-
ing as may be necessitated by the facts of a
particular case, an application may be made
special because of actual infringement (but not
for prospective infringement) upon the filing of
a petition alleging facts under oath or declara-
tion to show, or indicating why it is not possible
to show; (1) that there is an infringing device
or product actually on the market or method in
use, (2) when the device, product or method
alleged to infringe was first discovered to exist;
supplemented by an affidavit or declaration of
the applicant's attorney or agent to show, (3)
that he has made a rigid comparison of the
alleged infringing device, product, or method
with the claims of the application, (4) that, in
his opinion, some of the claims are unquestion-
ably infringed, (5) that he has made or caused

to be made a careful and thorough search of the
prior art or has a good knowledge of the perti-
nent prior art, and (6) that he believes all of
the claims in the application are allowable.

Models or specimens of the infringing prod-
uct or that of the application should not be
submitted unless requested.

# III. APPLICANT'S HEALTH

An application may be made special upon a
showing as by a doctor's certificate, that the
state of health of the applicant is such that he
might not be available to assist in the prosecu-
tion of the application if it were to run its
normal course.

# IV. APPLICANT'S AGE

An application may be made special upon a
showing, as by a birth certificate or the appli-
cant's affidavit or declaration, that the appli-
cant is 65 years of age, or more.

# V. ENVIRONMENTAL QUALITY

The Patent Office will accord "special" status
to all patent applications for inventions which
materially enhance the quality of the environ-
ment of mankind by contributing to the
restoration or maintenance of the basic life-
sustaining natural elements-air, water, and
soil.

All applicants desiring to participate in this
program should request that their applications
be accorded "special" status. Such requests
should be written, should identify the applica-
tions by serial number and filing date, and
should be accompanied by affidavits or declara-
tions under rule 102 by the applicant or his at-
torney or agent explaining how the inventions
contribute to the restoration or maintenance of
one of these life-sustaining elements.

# VI. ENERGY

The Patent Office will, on request, accord
"special" status to all patent applications for
inventions which materially contribute to (1)
the discovery or development of energy re-
sources, or (2) the more efficient utilization and
conservation of energy resources. Examples of
inventions in category (1) would be develop-
ments in fossil fuels (natural gas, coal, and
petroleum), nuclear energy, solar energy, etc.
Category (2) would include inventions relating
to the reduction of energy consumption in com-
bustion systems, industrial equipment, house-
hold appliances, etc.

All applicants desiring to participate in this
program should request that their applications
be accorded "special" status. Such requests

should be written, should identify the applica-
tion by serial number and filing date, and should
be accompanied by affidavits or declarations
under rule 102 by the applicant or his attorney
or agent explaining how the invention mate-
rially contributes to category (1) or (2) set
forth above.

## VII. SPECIAL EXAMINING PROCEDURE FOR CER- TAIN NEW APPLICATIONS -- ACCELERATED Ex- AMINATION

A new application (one which has not re-
ceived any examination by the examiner) may
be granted special status provided that appli-
cant (and this term includes applicant's at-
torney or agent) :

(a) Submits a written petition to make
special.

(b) Presents all claims directed to a single
invention, or if the Office determines that all the
claims presented are not obviously directed to
a single invention, will make an election without
traverse as a prerequisite to the grant of special
status.

The election may be made by applicant at the
time of filing the petition for special status.
Should applicant fail to include an election with
the original papers or petition and the Office
determines that a requirement should be made,
the established telephone restriction practice
will be followed.

If otherwise proper, examination on the
merits will proceed on claims drawn to the
elected invention.

If applicant refuses to make an election with-
out traverse, the application will not be further
examined at that time. The petition will be
denied on the ground that the claims are not
directed to a single invention, and the applica-
tion will await action in its regular turn.

Divisional applications directed to the non-
elected inventions will not automatically be
given special status based on papers filed with
the petition in the parent case. Each such
application must meet on its own all require-
ments for the new special status.

(c) Submits a statement that a pre-examina-
tion search was made, and specifying whether
by the inventor, attorney, agent, professional
searchers, etc., and listing the field of search
by class and subclass, publication, Chemical
Abstracts, foreign patents, etc. A search made
by a foreign patent office or the International
Patent Institute at The Hague, Netherlands
satisfies this requirement.

(d) Submits one copy each of the references
deemed most closely related to the subject mat-
ter encompassed by the claims.

(e) Submits a detailed discussion of the ref-
erences, which discussion points out, with the

particularity required by rule 111 (b) and (c),
how the claimed subject matter is distinguish-
able over the references. Where applicant indi-
cates an intention of overcoming one of the
references by affidavit or declaration under rule
131, the affidavit or declaration must be sub-
mitted before the application is taken up for
action, but in no event later than one month
after request for special status.

In those instances where the request for this
special status does not meet all the prerequisites
set forth above, applicant will be notified and
the defects in the request will be stated. The
application will remain in the status of a new
application awaiting action in its regular turn.
In those instances where a request is defective
in one or more respects, applicant will be given
one opportunity to perfect the request. If per-
fected, the request will then be granted.

Once a request has been granted, prosecution
will proceed according to the procedure set
forth below; there is no provision for "with-
drawal" from this special status.

The special examining procedure of VII (ac-
celerated examination) involves the following
procedures :

1\. The new application, having been granted
special status as a result of compliance with the
requirements set out above will be taken up by
the examiner before all other categories of ap-
plications except those clearly in condition for
allowance and those with set time limits, such as
examiner's answers, decisions on motions, etc.,
and will be given a complete first action which
will include all essential matters of merit as to
all claims. The examiner's search will be re-

stricted to the subject matter encompassed by
the claims. A first action rejection will set a
three-month shortened period for response.

2\. During the three-month period for re-
sponse, applicant is encouraged to arrange for
an interview with the examiner in order to re-
solve, with finality, as many issues as possible.
In order to afford the examiner time for reflec-
tive consideration before the interview, appli-
cant or his representative should cause to be
placed in the hands of the examiner at least one
working day prior to the interview, a copy
(clearly denoted as such) of the amendment
that he proposes to file in response to the exam-
iner's action. Such a paper will not become a
part of the file, but will form a basis for discus-
sion at the interview.

3\. Subsequent to the interview, or responsive
to the examiner's first action if no interview
was had. applicant will file his "record" re-
sponse. The response at this stage, to be proper,
must be restricted to the rejections, objections,
and requirements made. Any amendment
which would require broadening the search field
will be treated as an improper response.

4\. The examiner will, within one month from
the date of receipt of applicant's formal re-
sponse, take up the application for final dispo-
sition. This disposition will constitute either a
final action which terminates with the setting
of a three-month period for response, or a no-
tice of allowance. The examiner's response to
any amendment submitted after final rejection
should be prompt and by way of forms PO-303
or PO-327, by passing the case to issue, or by an
examiner's answer should applicant choose to

file an appeal brief at this time. The use of
these forms is not intended to open the door
to further prosecution. Of course, where rela-
tively minor issues or deficiencies might be
easily resolved, the examiner may use the tele-
phone to inform the applicant of such.

5\. A personal interview after final Office ac-
tion will not be permitted unless requested by
the examiner. However, telephonic interviews
will be permitted where appropriate for the
purpose of correcting any minor matters which
remain outstanding.

6\. After allowance, these applications are
given top priority for printing. See § 1309.

HANDLING OF PETITIONS TO MAKE SPECIAL

Each petition to make special, regardless of
the ground upon which the petition is based and
the nature of the decision, is made of record
in the application file, together with the decision
thereon. The Office that rules on a petition
is responsible for properly entering that peti-
tion and the resulting decision in the file record.
The petition, with any attached papers and sup-
porting affidavits, will be given a single paper
number and so entered in the "Contents" of the
file. The decision will be accorded a separate
paper number and similarly entered. To in-
sure entries in the "Contents" in proper order,
the clerk in the examining group will make
certain that all papers prior to a petition have
been entered and/or listed in the application file
before forwarding it for consideration of the
petition. Note §$ 1002.02(a). (c), and (j). [R-
34]

## 708.03 Examiner Tenders His Resig- nation

Whenever an examiner tenders his resigna-
tion. the supervisory primary examiner should
see that he spends his remaining time as far as
possible in winding up the old complicated cases
or those with involved records and getting as
many of his amended cases as possible ready for
final disposition.

If the examiner has considerable experience
in his particular art. it is also advantageous
to the Office if he indicates (in pencil) in the
file wrappers of cases in his docket, the field
of search or other pertinent data that he con-
siders appropriate.

## 709 Suspension of Action [R-47]

Rule 103. Suspension of action. (a) Suspension of
action by the Office will be granted at the request of
the applicant for good and sufficient cause and for a
rea-malde time specified. Only one suspension may

be granted by the primary examiner ; any further sus-
pension must be approved by the Commissioner.

(b) If action on an application is suspended when
not requested by the applicant, the applicant shall be
notified of the reasons therefor.

(c) Action by the examiner may be suspended by
order of the Commissioner in the case of applications
owned by the United States whenever publication of the
invention by the granting of a patent thereon might be
detrimental to the public safety or defense, at the re-
quest of the appropriate department or agency.

(d) Action on applications in which the Office has
accepted a request filed under rule 139 will be sus-
pended for the entire pendency of these applications
except for purposes relating to proceedings under rule
201(b).

Suspension of action (rule 103) should not
be confused with extension of time for reply
(rule 136). It is to be noted that a suspension
of action applies to an impending Office action
by the examiner whereas an extension of time
for reply applies to action by the applicant.
In other words. the action cannot be suspended
in an application which contains an outstand-
ing Office action awaiting response by the ap-
plicant. It is only the action by the examiner
which can be suspended under rule 103.

Paragraph (b) of the rule provides for a
suspension of Office action by the examiner on
his own initiative, as in §§ 709.01 and 1101.01 (i).
Petitions for a second or subsequent suspension
of action in patent applications under rule 103
are decided by the group director. See $ 1002 .-
02(e), item 11.

Paragraph (d) is used in the Defensive Pub-
lication Program described in § 711.06.

## 709.01 Overlapping Applications by Same Applicant or Owned by Same Assignee [R-34]

Examiners should not consider ex parte,
when raised by an applicant, questions which
are pending before the Office in inter partes
proceedings involving the same applicant. (See
ex parte Jones, 1924 C.D. 59; 327 O.G. 681.)

Because of this where one of several appli-
cations of the same inventor which contain
overlapping claims gets into an interference
it was formerly the practice to suspend action
by the Office on the applications not in the
interference in accordance with Ex parte
McCormick, 1904 C.D. 575; 113 O.G. 2508.

However, the better practice would appear to
be to reject claims in an application related to
another application in interference over the
counts of the interference and in the event said
claims are not cancelled in the outside applica-
tion, prosecution of said application should be

suspended pending the final determination of
priority in the interference.

If, on the other hand applicant wishes to
prosecute the outside application, and presents
good reasons in support therefor, prosecution
should be continued. Ex parte Bullier, 1899
C.D. 155, 88 O.G. 1161; In re Seebach, 1937
C.D. 495, 484 O.G. 503; In re Hammell, 1964
C.D. 733, 808 O.G. 25. See § 1111.03.
See also § 804.03.

## 710 Period for Response [R-29]

35 U.S.C. 133. Time for prosecuting application.
Upon failure of the applicant to prosecute the appli-
cation within six months after any action therein, of
which notice has been given or mailed to the applicant,
or within such shorter time, not less than thirty days,
as fixed by the Commissioner in such action, the appli-
cation shall be regarded as abandoned by the parties
thereto, unless it be shown to the satisfaction of the
Commisioner that such delay was unavoidable.

35 U.S.C. 267. Time for taking action in Government
applications. Notwithstanding the provisions of sec-
tions 133 and 151 of this title, the Commissioner may
extend the time for taking any action to three years,
when an application has become the property of the
United States and the head of the appropriate depart-
ment or agency of the Government has certified to the
Commissioner that the invention disclosed therein is
important to the armament or defense of the United
States.

See Chapter 1200 for period for response
when appeal is taken or court review sought.

# 710.01 Statutory Period [R-24]

Rule 135. Abandonment for failure to respond within
time limit. (a) If an applicant fails to prosecute his
application within six months after the date when the
last official notice of any action by the Office was mailed
to him, or within such shorter time as may be fixed
(rule 136), the application will become abandoned.

(b) Prosecution of an application to save it from
abandonment must include such complete and proper
action as the condition of the case may require. The
admission of an amendment not responsive to the last
official action, or refusal to admit the same, and any
proceedings relative thereto, shall not operate to save
the application from abandonment.

(c) When action by the applicant is a bona fide
attempt to advance the case to final action, and is
substantially a complete response to the examiner's
action, but consideration of some matter or compliance
with some requirement has been inadvertently omitted,
opportunity to explain and supply the omission may
be given before the question of abandonment is
considered.

(d) Prompt ratification or filing of a correctly
signed copy may be accepted in case of an unsigned
or improperly signed paper.

(See rule 7.)

The maximum statutory period for response
to an Office action is six months, 35 U.S.C. 133.
Shortened periods are currently used in prac-
tically all cases, see § 710.02(b).

# 710.01 (a) Statutory Period, How Computed [R-47]

The actual time taken for response is com-
puted from the date stamped on the Office'
action to the date of receipt by the Office of
applicant's response. No cognizance is taken
of fractions of a day and applicant's response
is due on the corresponding day of the month
six months or any lesser number of months
specified after the Office action.

Response to an Office action with a 3 month
shortened statutory period, dated November 30
is due on the following February 28 (or 29
if it is a leap year), while a response to an
Office action dated February 28 is due on May
28 and not on the last day of May. Ex parte
Messick. 1930 C.D. 6; 400 O.G. 3.

A one month extension of time extends the
time for response to the date corresponding to
the Office action date in the following month.
For example, a response to an Office action
mailed on January 31 with a 3 month shortened
stationary period would be due on April 30. If a
one month extension of time were given, the re-
sponse would be due by May 31. The fact that
April 30 may have been a Saturday, Sunday, or
holiday has no effect on the extension of time.
Where the period for response is extended by
some time period other than "one month" or an
even multiple thereof, the person granting the
extension should indicate the date upon which
the extended period for response will expire.

A thirty day period for response in the Office
means thirty calendar days including Satur-
days, Sundays and holidays. However, if the
period ends on a Saturday, Sunday, or holiday,
the response is timely if it is filed on the next
succeeding business day.

The date of receipt of a response to an Office
action is given by the "Office date" stamp
which appears on the responding paper.

In some cases the examiner's letter does not
determine the beginning of a statutory re-
sponse period. In all cases where the statutory
response period runs from the date of a previ-
ous action, a statement to that effect should be
included.

710.02(c)

## 710.02 Shortened Statutory Period and Time Limit Actions Computed [R-24]

Extract from Rule 136. Time less than six months.
(a) An applicant may be required to prosecute his
application in a shorter time than six months, but not
less than thirty days, whenever such shorter time is
deemed necessary or expedient. Unless the applicant is
notified in writing that response is required in less than
six months, the maximum period of six months is
allowed.

Under rule 136 (35 U.S.C. 133) an appli-
cant may be required to respond in a shorter
period than six months, not less than 30 days,
whenever it is deemed "necessary or expendi-
ent". Some conditions deemed "necessary or
expedient" are listed in § 710.02 (b).

In other situations, for example, the rejection
of a copied patent claim, the examiner may
require applicant to respond on or before a
specified date. These are known as time limit
actions and are established under authority of
35 U.S.C. 6. Some situations in which time
limits are set are noted in § 710.02(c). The
time limit requirement should be typed in
capital letters where required.

An indication of a shortened time for reply
should appear prominently on the first page
of all copies of actions in which a shortened
time for reply has been set so that a person
merely scanning the action can easily see it.

710.02 (b) Shortened Statutory Pe-
riod: Situations in Which
Used [R-32]

Under the authority given him by 35 U.S.C.
133 the Commissioner has directed the exam-
iners to set a shortened period for response to
every action. The length of the shortened stat-
utory period to be used depends on the type
of response required. Some specific cases of
shortened statutory period for response to be
given are:

THIRTY DAYS

Requirement for restriction or
election of species-no claim
rejected

§§ 809.02(a)
and 817.

### Two MONTHS

Winning party in terminated
interference to reply to unan-
swered Office action
§ 1109.01

Where, after the termination of an inter-
ference proceeding, the application of the
winning party contains an unanswered Office
action, final rejection or any other action, the
primary examiner notifies the applicant of

this fact. In this case response to the Office
action is required within a shortened statutory
period running from the date of such notice.
See Ex parte Peterson, 1941 C.D. 8; 525 O.G. 3.

Ex parte Quayle.
§ 714.14

When an application is in condition for
allowance, except as to matters of form, such
as correction of drawings or specification, a
new oath, etc., the case will be considered
special and prompt action taken to require cor-
rection of formal matters. Such action should
include an indication on first page form letter
POL-326 that prosecution on the merits is
closed in accordance with the decision in Ex
parte Quayle, 1935 C.D. 11; 453 O.G. 213. A
two month shortened statutory period for re-
sponse should be set.

Multiplicity rejection-no other
rejection
§ 706.03 (1)
A new ground of rejection in an

examiner's answer on appeal __ § 1208.01

THREE MONTHS

To respond to any Office action on the merits.
PERIOD FOR RESPONSE RESTARTED

Incorrect citation by examiner-
regardless of time remaining in
original period.
§ 710.06

The above periods may be changed under
special, rarely occurring circumstances.

A shortened statutory period may not be
less than 30 days (35 U.S.C. 133).

710.02 (c) Time-Limit Actions: Sit-
uations in Which Used
[R-47]

As stated in § 710.02, 35 U.S.C. 6 provides
authority for the Commissioner to establish
rules and regulations for the conduct of pro-
ceedings in the Patent and Trademark Office.
Among the rules are certain situations in which
the examiner sets a time limit within which
some specified action should be taken by appli-
cant. Some situations in which a time limit is
set are :

(a) A portion of rule 203(b) provides that
in suggesting claims for interference :

The parties to whom the claims are suggested will be
required to make those claims (i. e., present the sug-
gested claims in their applications by amendment)
within a specified time, not less than 30 days, In order
that an Interference may be declared.

See § 1101.01 (m).

(b) Rule 206(b) provides:

Rule 206(b). Where the examiner is of the opinion
that none of the claims can be made, he shall reject the

copied claims stating in his action why the applicant
cannot make the claims and set a time limit, not less
than 30 days, for reply. If, after response by the
applicant, the rejection is made final, a similar time
limit shall be set for appeal. Failure to respond or
appeal, as the case may be, within the time fixed will,
in the absence of a satisfactory showing, be deemed a
disclaimer of the invention claimed.

See § 1101.02(f).

(c) When applicant's action is not fully re-
responsive to the Office action, the examiner
may give applicant one month or the remainder
of the period for response, whichever is longer,
to complete his response. See rule 135(c)
which reads as follows:

Rule 135(c). When action by the applicant is a
bona fide attempt to advance the case to final action,
and is substantially a complete response to the exam-
iner's action, but consideration of some matter or com-
pliance with some requirement has been inadvertently
omitted, opportunity to explain and supply the omis-
sion may be given before the question of abandonment
is considered.

See § 714.03.

(d) In applications filed on or after October
25, 1965, applicant is given one month or the
remainder of the period for response, which-
ever is longer, to remit any additional fees re-
quired for the submission of an amendment in
response to an Office action.

See §§ 607 and 714.03.

(e) To ratify or otherwise correct an un-
signed amendment, applicant is given one
month or the remainder of the period for
response, whichever is longer.

See $ 714.01 (a).

(f) Where an application is otherwise allow-
able but contains a traverse of a requirement to
restrict, one month is given to cancel claims to
nonelected invention or species or take other
appropriate action. See rules 141, 144, and
§§ 809.02(c) and 821.01.

# 710.02(d) Difference Between Short- ened Statutory and Time- Limit Pericds [R-24]

The distinction between a limited time for
reply and a shortened statutory period under
rule 136 should not be lost sight of. The pen-
alty attaching to failure to reply within the
time limit ( from the suggestion of claims or the
rejection of copied patent claims) is loss of the
subject matter involved on the doctrine of dis-
claimer. A rejection on the ground of dis-
claimer is appealable. On the other hand, a
complete failure to respond within the set stat-
ntory period results in abandonment of the

entire application. This is not appealable, but
a petition to revive may be granted if the delay
was unavoidable. Further, where applicant re-
sponds a day or two after the time limit, this
may be excused by the examiner if satisfac-
torily explained; but a response one day late
in a case carrying a shortened statutory period
under rule 136, no matter what the excuse,
results in abandonment; however, if asked for
in advance extension of the period may be
granted by the examiner, provided the exten-
sion does not go beyond the six months' period
from the date of the Office action. See also
§ 1101.02(f).

# 710.02(e) Extension of Time [R- 47]

Extract from Rule 186. (b) The time for reply, when
a time less than six months has been set, will be ex-
tended only for sufficient cause, and for a reasonable
time specified. Any request for such extension must
be filed on or before the day on which action by the
applicant is due, but in no case will the mere filing
of the request effect any extension. Only one extension
may be granted by the primary examiner in his dis-
cretion : any further extension must be approved by
the Commissioner. In no case can any extenison carry
the date on which response to an action is due beyond
six months from the date of the action.

It should be very carefully noted that neither
the primary examiner nor the Commissioner
has authority to extend the shortened statutory
period unless request for the extension is filed
on or before the day on which applicant's re-
sponse is due. While the shortened period may
be extended within the limits of the statutory
six months' period, no extension can operate to
extend the time beyond the six months.

Compare, however, rule 135 (c) and § 714.03.
Any request under rule 136(b) for extension
of time for reply to an Office action must state a
reason in support thereof; under the present
policy the application of the rule will entail
only a limited evaluation of the stated reason.

This liberality will not apply to

(1) any requests for more than one-month
extension, and

(2) second and subsequent requests for ex-
tension of time to reply to a particular
Office action.

All first requests for extension of time to an
Office action are decided by the primary ex-
aminer for any period of time up to the maxi-
mum six month period. All requests subse-
quent to the first request for extension of time
to respond to a particular Office action are for-
warded to the group director for action. For

an extension of time to file an appeal brief see
§ 1206.

When a timely filed request for extension of
time is supported by a reason sufficient to justify
its grant, and it is apparent that granting it
only for the period requested would not be ap-
propriate (for example, where the period for
response, if extended as requested. has already
expired or is about to expire when the decision
on the request is being made), the official mak-
ing the decision on the request should grant the
request for extension of time for a suitable
period longer than that requested. if possible.

If a request for extension of time is filed in
duplicate and accompanied by a stamped re-
turn-addressed envelope, the Office will indicate
the action taken on the duplicate and return it
promptly in the envelope. Utilization of this
procedure is optional on the part of applicant.

In this procedure, the action taken on the
request should be noted on the original and on.
the copy which is to be returned. The notation
on the original, which becomes a part of the
file record, should be signed by the person
granting or denying the extension. and the
name and title of that person should also ap-
pear in the notation on the copy which is re-
turned to the person requesting the extension.

When the request is granted, no further ac-
tion is necessary; when it is denied. a formal
letter of denial, giving the reason for denial,
should be forwarded promptly after the mail-
ing of the duplicate.

If the request for extension of time is granted,
the time extended is added to the last calendar
day of the original period, as opposed to being
added to the day it would have been due when
said last day is a Saturday, Sunday or holiday.

If the request for extension of time is granted.
the due date is computed from the date stamped
on the Office action, as opposed to the original
due date. See Section 710.01 (a). For example,
a response to an Office action with a 3 month
shortened statutory period, dated November 30,
is due on the following February 28 (or 29,
if it is a leap year). If the period for response
is extended an additional month. the response
becomes due on March 30, not on March 28.
Where the period for response is extended by
some time period other than "one month" or a
multiple thereof. the person granting the ox-
tension should indicate the date upon which the
extended period for response will expire.

For purposes of convenience, a request for
an extension of time may be personally de-
livered and left with the examiner to become
an official paper in the file without routing
through the mail room. The examiner who ac-
cepts the request for an extension of time will
have it date stamped with the group stamp.

If duplicate copies of a request for an ex-
tension of time are hand delivered to an ex-
amining group, both coipes are dated, either
stamped approved or indicated as being denied,
and signed. The duplicate copy is returned to
the delivering person regardless of whether the
request was signed by a registered attorney or
agent, either of record or acting in a representa-
tive capacity, the applicant or the assignee of
record of the entire interest.

If the request for extension is not presented
in duplicate, the applicant should be advised
promptly by way of form letter POL-327 re-
garding action taken on the request so that the
file record will be complete.

## FINAL REJECTION-TIME FOR RESPONSE

The filing of a timely first response to a final
rejection having a shortened statutory period
for response is construed as including a request
to extend the shortened statutory period for an
additional month, which will be granted. even
if previous extensions have been granted, but
in no case may the period for response exceed
six months from the date of the final action.
Even if previous extensions have been granted.
the primary examiner is authorized to grant the
request for extension of time which is implicit
in the filing of a timely first response to a final
rejection. An object of this practice is to obviate
the necessity for appeal or filing a continuing
case merely to gain time to consider the examin-
er's position in reply to an amendment timely
filed after final rejection. Accordingly, the
shortened statutory period for response to a
final rejection to which a proposed response has
been received will generally be extended one
month.

Normally. examiners will complete a response
to an amendment after final rejection within five
days after receipt thereof. In those rare situa-
tions where the advisory action cannot be mailed
in sufficient time for applicant to consider the
examiner's position with respect to the proposed
response before abandonment of the application,
the granting of additional time to complete the
response to the final rejection or to take other
appropriate action would be appropriate. The
advisory action form (POL-303) states that
"THE PERIOD FOR RESPONSE IS EX-
TENDED TO RUN.MONTHS FROM
THE DATE OF THE FINAL REJEC-
TION"" The blank before "MONTHS" should
be filled in with an integer (4, 5, or 6) ; frac-
tional months should not be indicated. In no
rase can the period for reply to the final re-
jection be extended to execed six months from
the mailing date thereof.

During the additional period, no applicant or
attorney initiated interview is normally per-
mitted. Since a timely first response to a final
rejection is construed as including a request for
an extension of time, any subsequent request for
an extension of time is considered to be a second
or subsequent request and must be submitted to
the group director.

Failure to file a response during the shortened
statutory period results in abandonment of the
application.

710.04 Two Periods Running [R-
24]

There sometimes arises a situation where two
different periods for response are running

10.711

against an application, the one limited by the
regular statutory period, the other by the lim-
ited period set in a subsequent Office action.
The running of the first period is not sus-
pended nor affected by an ex parte limited
time action or even by an appeal therefrom.
For an exception, involving suggested claims,
see § 1101.01(n).

# 710.04(a) Copying Patent Claims [R-24]

Where, in an application in which there is an
unanswered rejection of record, claims are
copied from a patent and all of these claims
are rejected there results a situation where two
different periods for response are running
against the application. One period, the first,
is the regular statutory period of the unan-
swered rejection of record, the other period is
the limited period set for response to the re-
jection (either first or final), established under
rule 206. The date of the last unanswered
Office action on the claims other than the
copied patent claims is the controlling date of
the statutory period. (Ex parte Milton, 164
Ms. D. 1, 63 USPQ 132 and Ex parte Nelson,
164 Ms. D. 361, 26 J.P.O.S. 564.) See also
§ 1101.02(f).

# 710.05 Period Ending on Saturday, Sunday or Holiday [R-45]

35 U.S.C. 21. Day for taking action falling on Satur-
day, Sunday, or holiday. When the day, or the last
day, for taking any action or paying any fee in the
\- United States Patent and Trademark Office falls on
Saturday, Sunday, or a holiday within the District
of Columbia, the action may be taken, or the fee paid,
on the next succeeding secular or business day.

Rule 7. Times for taking action ; expiration on Satur-
day, Sunday, or holiday. Whenever periods of time
are specified in these rules in days. calendar days are
intended. When the day, or the last day, fixed by stat-
ute or by or under these rules for taking any action or
paying any fee in the Patent and Trademark Office falls
on Saturday, Sunday, or on a holiday within the Dis-
trict of Columbia, the action may be taken, or the fee
paid, on the next succeeding day which is not a Satur-
day, Sunday, or a holiday. See rule 304 for time for
appeal or for commencing civil action.

As of January 1, 1971, the holidays in the
District of Columbia are: New Year's Day,
January 1; Washington's Birthday, the third
Monday in February; Memorial Day, the last
Monday in May; Independence Day, July 4;
Labor Day, the first Monday in September;
Columbus Day, the second Monday in October;
Veterans' Day, the fourth Monday in October;
Thanksgiving Day, the fourth Thursday in
November: Christmas Day, December 25; In-

auguration Day (January 20, every four years).
Whenever a holiday falls on a Sunday, the fol-
lowing day (Monday) is also a holiday. Ex.
Order 10,358; 17 F.R. 5269.

When a holiday falls on a Saturday, the
preceding day, Friday, is considered to be a holi-
day within the District of Columbia and the
Patent and Trademark Office will be closed for
business on that day (5 U.S.C. 6103). Accord-
ingly, any action or fee due on such a holiday
Friday or Saturday is to be considered timely
if the action is taken, or the fee paid, on the next
succeeding day which is not a Saturday, Sun-
day or a holiday.

When an amendment is filed a day or two
later than the expiration of the period fixed by
statute, care should be taken to ascertain
whether the last day of that period was Satur-
day, Sunday or a holiday in the District of
Columbia, and if so, whether the amendment
was filed or the fee paid on the next succeed-
ing day which is not a Saturday, Sunday or a
holiday.

An amendment received on such succeeding
day which was due on Saturday, Sunday or a
holiday is endorsed on the file wrapper with
the date of receipt. The Saturday, Sunday
and/or holiday is also indicated.

# 710.06 Miscellaneous Factors Deter- mining Date [R-26]

Where the citation of a reference is incorrect
and this error is called to the attention of the
Office before the expiration of the period for
response, a new period for response starts from
the date of the Office letter giving the correct
citation and forwarding the correct copy. The
previous period is restarted regardless of the
time remaining. See § 707.05 (g) for the manner
of correcting the record where there has been
an erroneous citation.

Where for any reason it becomes necessary
to remail any action (§ 707.13), the action
should be correspondingly redated, as it is the
re-mailing date that establishes the beginning
of the period for response. Ex parte Gourtoff,
1924 C.D. 153; 329 O.G. 536.

A supplementary action after a rejection ex-
plaining the references more explicitly or giv-
ing the reasons more fully, even though no
further references are cited, establishes a new
date from which the statutory period runs.

If for any other reason an Office action is
defective in some matter necessary for a proper
response, applicant's time to respond begins
with the date of correction of such defect.

## 711 Abandonment [R-45]

Rule 135. Abandonment for failure to respond within
time limit. (a) If an applicant fails to prosecute his

application within six months after the date when the
last official notice of any action by the Office was mailed
to him, or within such shorter time as may be fixed
(rule 136), the application will become abandoned.

(c) When action by the applicant is a bona fide at-
tempt to advance the case to final action, and is sub-
stantially a complete response to the examiner's action.
but consideration of some matter or compliance with
some requirement has been inadvertently omitted, op-
portunity to explain and supply the omission may be
given before the question of abandonment is considered.

(d) Prompt ratification or filing of a correctly signed
copy may be accepted in case of an unsigned or im-
properly signed paper. (See rule 7.)

Rule 138. Express abandonment. An application may
be expressly abandoned by filing in the Patent and
Trademark Office a written declaration of abandon-
ment signed by the applicant himself and the assignee
of record, if any, and identifying the application. Ex-
cept as provided in Rule 262 an application may also
be expressly abandoned by filing a written declara-
tion of abandonment signed by the attorney or agent
of record. Express abandonment of the application may
not be recognized by the Office unless it is actually re-
ceived by appropriate officials in time to act thereon
before the date of issue.

Abandonment may be either of the invention
or of an application. This discussion is con-
cerned with abandonment of the application
for patent.

An abandoned application, in accordance
with rules 135 and 138, is one which is re-
moved from the Office docket of pending cases
through :

1\. formal abandonment

a. by the applicant, himself (acquiesced in
by the assignee if there be one), or

b. by the attorney or agent of record (in-
cluding an associate attorney or agent ap-
pointed by the principal attorney or agent
and whose power is of record but not includ-
ing a registered attorney or agent acting in a
representative capacity under rule 34 (a) ) ; or

2\. failure of applicant to take appropriate
action within a specified time at some stage in
the prosecution of the case.

Where an applicant, himself, formally aban-
dons an application and there is a corporate as.
signee, the acquiescence must be made through
an officer whose official position is indicated.

See § 712 for abandonment for failure
to pay issue fee.

# 711.01 Express or Formal Abandon- ment [R-45]

The applicant, the assignee of record and the
attorney or agent of record, if any, can sign an
express abandonment. It is imperative that the
attorney or agent of record exercise every pre-
caution in ascertaining that the abandonment of
the application is in accordance with the desires
and best interests of the applicant prior to sign-
ing a declaration of express abandonment of a
patent application. Moreover, special care
should be taken to insure that the appropriate
application is correctly identified in the letter
of abandonment.

A declaration of abandonment properly
signed becomes effective when an appropriate
official of the Office takes action of recognition
of the declaration. When so recognized, the date
of abandonment may be the date of recognition
or a different date if so specified in the declara-
tion itself. For example, where a continuing ap-
plication is filed with a request to abandon the
prior application as of the filing date accorded
the continuing application, the date of the
abandonment of the prior application will be
in accordance with the request once it is
recognized.

Action in recognition of an express abandon-
ment may take the form of an acknowledgment
by the examiner or the Patent Issue Division of
the receipt of the express abandonment, indicat-
ing that it is in compliance with rule 138.
Alternatively, recognition may be no more than
the transfer of drawings to a new application
pursuant to instructions which include a request
to abandon the application containing the draw-
ings to be transferred (see rule 60 and § 608.
02(i)).

It is suggested that divisional applications
being submitted under rule 60 be reviewed be-
fore filing to ascertain whether the prior ap-
plication should be abandoned. Care should be
exercised in sitautions such as these as the Office
looks on express abandonments as acts of de-
liberation, intentionally performed.

Applications may be expressly abandoned
as provided for in rule 138. When a letter
expressly abandoning an application (not in
issue) is received, the examiner should acknowl-
edge receipt thereof, indicate whether it does or
does not comply with the requirements of rule
138.

If it does comply, the examiner should re-
spond by using form POL-327 and by checking
the appropriate boxes which indicate that the
letter is in compliance with rule 138 and that
the application is being forwarded to the
Abandoned Files Unit. The examiner's signa-

ture may appear at the bottom of the form. If
such a letter does not comply with the require-
ments of rule 138, a fully explanatory letter
should be sent.

In view of the doctrine set forth in Ex parte
Lasscell, 1884 C.D. 66; 29 O.G. 861, an amend-
ment canceling all of the claims, even though
said amendment is signed by the applicant
himself and the assignee, is not an express
abandonment. Such an amendment is re-
garded as non-responsive and should not be
entered, and applicant should be notified as
explained in §§ 714.03 to 714.05. But see
§ 608.02(i) for situation where application is
abandoned along with transfer of drawings to
a new application.

An attorney or agent not of record in an ap-
plication may file a withdrawal of an appeal
under rule 34(a) except in those instances where
such withdrawal would result in abandonment
· of the application. In such instances the with-
drawal of appeal is in fact an express abandon-
ment and does not comply with rule 138.

An express abandonment signed with a firm
name is properly acceptable only if the power
of attorney naming the firm was filed prior to
July 2, 1971 and has not been revoked.

AFTER NOTICE OF ALLOWANCE

Letters of abandonment of allowed applica-
tions are acknowledged by the Patent Issue
Division.

Rule 313 provides that an allowed applica-
tion will not be withdrawn from issue except by
approval of the Commissioner, and that after
the first portion of the issue fee has been paid
and the patent to be issued has received its date
and number, it will not be withdrawn for any
reason except mistake on the part of the Office,
or because of fraud or illegality in the applica-
tion, or for interference. In cases where the
second paragraph of rule 313 precludes giving
effect to an express abandonment, the appropri-
ate remedy is a petition under rule 183, show-
ing an extraordinary situation where justice re-
quires suspension of rule 313.

The Defensive Publication Program is set
forth in § 711.06.

711.02 Failure To Take Required Ac-
tion During Statutory Period
[R-20]

Rule 135 specifies that an application be-
comes abandoned if applicant "fails to prose-

711.03

cute" his application within the fixed statutory
period. This failure may result either from
1\. failure to respond within the statutory
period, or

2\. insufficiency of response, i.e., failure to
take "complete and proper action, as the condi-
tion of the case may require" within the statu-
tory period (rule 135).

Abandonment by entire failure to respond
presents no problems.

Nor is there ordinarily any particular diffi-
culty when an amendment reaches the Office
(not the group) after the expiration of the
statutory period. The case is abandoned and
the remedy is to petition to revive it. The ex-
aminer should notify the applicant or attorney
at once that the application has been aban-
doned by using form letter POL-327. The
proper boxes on the form should be checked
and the blanks for the dates of the proposed
amendment and the Office action completed.
The late amendment is endorsed on the file
wrapper but not formally entered. (See
§ 714.17.)

To pass on questions of abandonment, it is
essential that the examiner know the dates
that mark the beginning and end of the statu-
tory period under varying situations. Appli-
cant's response must reach the Office within the
set statutory period for reply dating from the
date stamped on the Office letter. See §§ 710
to 710.06.)

# 711.02(a) Insufficiency of Response [R-35]

Abandonment may result from a situation
where applicant's reply is within the period for
response but is not fully responsive to the Office
action. But see § 710.02 (c), par. (c). See also
§§ 714.02 to 714.04.

# 711.02(b) Special Situations Involv- ing Abandonment [R-45]

The following situations involving questions
of abandonment often arise, and should be spe-
cially noted :

1\. Copving claims from a patent when not
suggested by the Patent and Trademark Office
does not constitute a response to the last Office
action and will not save the case from abandon-
ment, unless the last Office action relied solely
on the patent for the rejection of all the claims
rejected in that action.

2\. A case may become abandoned through
withdrawal of, or failure to prosecute, an ap-
peal to the Board of Appeals. See §§ 1215.01 to
1215.04.

3\. Likewise it may become abandoned
through dismissal of appeal to C.C.P.A. or
civil action, where there was not filed prior to
such dismissal an amendment putting the case
in condition for issue or fully responsive to the
Board's decision. Abandonment results from
failure to perfect an appeal as required by
C.C.P.A. Rule 25. See §§ 1215.05 and 1216.01.

4\. Where claims are suggested for interfer-
ence near the end of the period for response
running against the case, see § 1101.01 (n).

5\. When drawings are transferred under
rule 88. See § 608.02 (i).

# 711.02(c) Termination of Proceed- ings [R-23]

"Termination of proceedings" is an expres-
sion found in 35 U.S.C. 120. As there stated,
a second application is considered to be co-
pending with an earlier case if it is filed before
(a) the patenting, (b) the abandonment of, or
(c) other termination of proceedings in the
earlier case. "Before" has consistently been
interpreted, in this context, to mean "not later
than".

In each of the following situations, proceed-
ings are terminated :

1\. When the issue fee is not paid and the ap-
plication is abandoned for failure to pay the
issue fee, proceedings are terminated as of the
date the issue fee was due and the application is
the same as if it were abandoned on that date
(but if the issue fee is later accepted, on petition,
the application is in a sense revived). See § 712.

2\. If an application is in interference involv-
ing all the claims present in the application as
counts and the application loses the interfer-
ence as to all the claims, then proceedings on
that application are terminated as of the date
appeal or review by civil action was due if no
appeal or civil action was filed.

3\. Proceedings are terminated in an applica-
tion after decision by the Board of Appeals
as explained in § 1214.06.

4\. Proceedings are terminated after a deci-
sion by the court as explained in §§ 1215.05 and
1216.01.

# 711.03 Reconsideration of Holding of Abandonment; Revival

When advised of the abandonment of his
application, applicant may either ask for recon-
sideration of such holding, if he disagrees with
it on the basis that there is no abandonment in
fact ; or petition for revival under rule 137.

711.03(a)

# MANUAL OF PATENT EXAMINING PROCEDURE

## 711.03(a) Holding Based on Insuffi- ciency of Response [R- 35]

Applicant may deny that his response was
incomplete.

While the primary examiner has no authority
to act upon an application in which no action by
applicant was taken during the period for re-
sponse, he may reverse his holding as to whether
or not an amendment received during such
period was responsive and act on a case of such
character which he has previously held aban-
doned. This is not a revival of an abandoned ap-
plication but merely a holding that the case was
never abandoned. See also § 714.03.

# 711.03(b) Holding Based on Failure To Respond Within Period [R-45]

When an amendment reaches the Patent
and Trademark Office (not the examining
group) after the expiration of the period for
response and there is no dispute as to the dates
involved, no question of reconsideration of a
holding of abandonment can be presented.

However, the examiner and the applicant
may disagree as to the date on which the period
for response commenced to run or ends. In this
situation, as in the situation involving suffi-
ciency of response, the applicant may take issue
with the examiner and point out to him that
his holding was erroneous.

# 711.03(c) Petitions Relating to Aban- donment [R-45]

Rule 137. Revival of abandoned application. An ap-
plication abandoned for failure to prosecute may be
revived as a pending application if it is shown to the
satisfaction of the Commissioner that the delay was
unavoidable. A petition to revive an abandoned ap-
plication must be accompanied by a verified showing
of the causes of the delay, by the proposed response
unless it has been previously filed, and by the petition
fee.

A decision on a petition to revive an aban-
doned application is based solely on whether a
satisfactory showing has been made that the
delay was unavoidable (35 U.S.C. 133). A peti-
tion to revive is not considered unless the peti-
tion fee and a proposed response to the last
Office action has been received (rule 137).
While a response to a non-final action may be
either an argument or an amendment under
rule 111, a response to a final action "must in-
clude cancellation of, or appeal from the rejec-
tion of, each claim so rejected" under rule 113.

Accordingly, in any case where a final rejec-
tion had been made, the proposed response re-
quired for consideration of a petition to revive
must be either an appeal or an amendment that
cancels all the rejected claims or otherwise prima
facie places the application in condition for
allowance. When a notice of appeal is the ap-
propriate response accompanying a petition to
revive, the brief required by rule 192 is due
within two months from the date the petition to
revive is granted. In those situations where
abandonment occurred because of the failure to
file an appeal brief, the proposed response, re-
quired for consideration of a petition to revive,
must include a brief accompanied by the proper
fee.

The granting of a petition to revive does not
serve in any way as a determination that the
proposed response to the Office action is com-
pletely responsive. Revived applications are.
forwarded to the examiner to determine the
completeness of the proposed response. Such
applications must be taken up Special. If the
examiner determines that the response is com-
plete, he should promptly take the case up for
action. If the proposed response is not a com-
plete response to the last Office action, the ex-
aminer should write a letter to the applicant
informing him of the specific defects in his
response and set a one-month time limit for
applicant to complete his response. If the appli-
cant does not complete his response within the
one-month limit, the application is again
abandoned.

A petition to revive an abandoned applica-
tion should not be confused with a petition
from an examiner's holding of abandonment.
Abandonment may result not only from insuffi-
ciency of response but also from entire failure
to respond, within the statutory period follow-
ing an Office action.

Where the holding of abandonment is predi-
cated on the insufficiency of the response, or
disagreement as to controlling dates the peti-
tion from such holding comes under rule 181
and does not require a fee.

Where the applicant acquiesces in the hold-
ing of abandonment, or where the petition
from such holding is denied, applicant's only
recourse. so far as concerns the particular case
involved, is by petition to revive.

See $ 712 for a petition for late payment of the
issue fee.

NOTIFICATION OF CHANGE OF ADDRESS

Applications have become abandoned as a
consequence of a change of correspondence ad-
dress therein, where an Office action is mailed
to the old. uncorrected address and fails to reach
the addressee sufficiently early to permit him to

file a timely response. One factor for considera-
tion in deciding petitions under rule 137 to re-
vive such applications is the evidenced degree of
care that has been exercised in adhering to the
requirement (see § 601.03) for prompt notifica-
tion in each concerned application of the change
of address. In such instances, the showing of
the cause of unavoidable delay must include an
adequate showing that a timely notification of
the change of address was filed in the applica-
tion concerned, and in a manner reasonably cal-
culated to call attention to the fact that it was
a notification of a change of address. The mere
inclusion, in a paper filed in an application for
another purpose, of an address differing from
the previously provided correspondence address,
without mention of the fact that an address
change was being made, ordinarily will not be
considered sufficient notification of a change of
address. If no such notification was filed, or was
filed belatedly, the showing must include an ade-
quate explanation of that failure or delay. A
showing that notification was made on a paper
filed in the Patent and Trademark Office list-
ing plural applications as being affected will not
be considered to constitute a proper notification.

## OFFICE ACTION-TIMELY RESPONSE

The Patent and Trademark Office has been
receiving an excessively large volume of peti-
tions to revive based primarily on the late filing
of amendments and other responses to official
actions. Many of these petitions indicate that
the late filing was due to unusual mail delays;
however, the records generally show that the
filing was only two or three days late.

In order to alleviate, for applicants and the
Office, the problems and expenditures of time
and effort occasioned by abandonments and peti-
tions to revive, it is suggested that responses to
official action be mailed to the Patent and Trade-
mark Office at least one, and preferably two,
week(s) prior to the expiration of the period
within which a response is required. This sug-
gestion is made in the interest of improving ef-
ficency, thereby providing better service to the
public.

## CONDITIONAL PETITION TO REVIVE

Since applications that become abandoned un-
intentionally present burdens to both the Patent
\+ and Trademark Office and the applicant. a sim-
plified procedure has been devised to alleviate
these burdens when the abandonment results
from a delay in the mails. This procedure pro-
vides for an automatic petition to revive or peti-
tion to accept the delayed payment of issue fee.

It is suggested that when a communication,
complying with the circumstances enumerated
below, is mailed to the Patent and Trademark

Office a conditional petition be attached to the
communication.

If the communication is received in the Pat-
ent and Trademark Office after the due date and
the application becomes abandoned, the condi-
tional petition will become effective, subject to
the following requirements. The petition must
include (1) an authorization to charge a deposit
account for any required fees, including the peti-
tion fee (35 U.S.C. 41(a)7), and (2) an oath
or declaration signed by the person mailing the
communication and also signed by the applicant
or his registered attorney or agent. The word-
ing of the petition is dependent on the type of
mail service used to forward the communication.

(1) If first class or air mail service is used,
the oath or declaration must state that the com-
munication and petition were either placed in
the United States mail as first class or air mail,
or placed in the mail outside the United States
as air mail. Since mail handled in this manner
may reasonably be expected to reach the Patent
and Trademark Office within three days of
posting, any mail delays beyond such time will
be considered to constitute unavoidable delay
and sufficient cause to grant a petition to revive
(35 U.S.C. 133) or a petition to accept delayed
payment of an issue fee (35 U.S.C. 151). For
example, if a response was due in the Patent
and Trademark Office on June 10, 1974, the
communication and conditional petition must
be posted no later than June 6, 1974 in order
for the conditional petition to be effective.
June 7, 1974 is not "more than three calendar
days prior to the due date" which is June 10,
1974.

(2) If the "Post Office to Addressee" express
mail service (see § 502) is used, the oath or de-
claration must state that the communication and
petition were deposited at an Express Mail win-
dow no later than 5:00 p.m. on a day which is at
least the day preceding the due date, and were
requested to be mailed via the "Post Office to
Addressee" Express Mail Service. Since mail
handled in this manner may reasonably be ex-
pected to reach the Patent and Trademark Of-
fice no later than 3:00 p.m. of the next workday
following its deposit before 5:00 p.m. at any
postal facility in the United States with an Ex-
press Mail window, any mail delays beyond such
time will be considered to constitute unavoid-
able delay to grant a petition to revive (35
U.S.C. 133) or a petition to accept delayed pay-
ment of an issue fee (35 U.S.C. 151).

The circumstances under which this procedure
may be used are those where the communication,
if timely filed, (1) would be a proper and com-
plete response to an action or request by the
Patent and Trademark Office, and (2) would +
stop a period for response from continuing to

711.03(c)

# MANUAL OF PATENT EXAMINING PROCEDURE

run. Accordingly, this procedure would be ap-
propriate for :

1\. A response to a non-final Office action.

2\. A response to a final Office action in the
form of an amendment that cancels all re-
jected claims or otherwise prima facie
places the application in condition for
allowance.

3\. A notice of appeal and requisite fee.

4\. An appeal brief, in triplicate, and requisite
fee.

5\. A base issue fee.

6\. A balance of issue fee.

Categories 1-4 would include a conditional
petition to revive. Categories 5 and 6 would in-
clude a conditional petition to accept the de-
layed payment of the issue fee. The boxes on
the below suggested format should be checked
accordingly.

Examples for which this procedure would not
be appropriate and will not apply include the
following types of communications when they
are forwarded to the Patent and Trademark
Office.

1\. Application papers.

2\. A response to a final Office action other
than that indicated in categories 2 and 3,
above.

3\. Extensions of time.

4\. Petitions for delayed payment of either the
issue fee or balance of issue fee.

5\. Amendments under rule 312.

6\. Priority documents.

Normal petition practices are not affected in
those situations where this procedure is either
not elected or appropriate.

A suggested format for the conditional peti-
tion where the communication and petition are
placed in the United States mail as first class
or air mail, or placed in the mail outside the
United States as air mail is shown below :
Applicant (s)
☐
Petition to re-
vive

Date Filed

Serial No.
☐
Petition to ac-
cept de-
layed pay-
ment of is-
sue fee

For

I hereby certify that the attached communication
is being deposited in
☐
the United States mail as first class or air mail

in an envelope addressed to : Commissioner of Patents,
and Trademarks Washington, D.C. 20231, on
which date is more than three (3) calendar
days prior to the due date from

by
(Location)

(Name of
Individual)

In the event that such communication is not timely
filed in the United States Patent and Trademark Of-
fice, it is requested that this paper be treated as a peti-
tion and that the :

☐
delay in prosecution be held unavoidable 35
U.S.C. 133.

☐
delayed payment of the fee be accepted-35 U.S.C.
151.

The petition fee required by 35 U.S.C. 41 (a) 7 is au-
thorized to be charged to Deposit Account No.
in the name of

The undersigned declare further that all statements
made herein are true, based upon the best available
information ; and further, that these statements were
made with the knowledge that willful false statements
and the like so made are punishable by fine or impris-
onment, or both, under Section 1001 of Title 18 of the
United States Code, and that such willful false state-
ments may jeopardize the validity of the application or
any patent issuing thereon.

Date

(Signature of applicant or signa-
ture and registration number of
Registered Representative)
And

Date

(Signature of person mailing, if
other than the above)

A suggested format for the conditional peti-
tion where the communication and petition are
placed in the United States "Post Office to Ad-
dressee" express mail, is shown below :

Applicant (s)

Serial No.

☐
Petition to
revive

Date Filed

Title

Petition to
☐
accept de-
layed pay-
ment of
issue fee

I hereby certify that the attached communication is
being deposited at an express mail window in a United
States Postal Service facility and intended it to be
mailed using the Postal Service's "Post Office to Ad-
dressee" express mail service in an envelope addressed
to: Commissioner of Patents and Trademarks, Wash-
ington, D.C. 20231, prior to 5:00 p.m. on
which date is at least the day preceding the due date,
at

(location)
(Name of individual)

In the event that such communication is not timely
filed in the Patent and Trademark Office, it is requested
that this paper be treated as a petition and that the :

☐
delay in prosecution be held unavoidable-35
U.S.C. 133.

☐
the mail outside the United States as air mail
☐
delayed payment of the fee be accepted-35 U.S.C.
151.

The petition fee required by 35 U.S.C. 41 (a) 7 is au-
thorized to be charged to Deposit Account No.
in the name of

onment, or both, under Section 1001 of Title 18 of the
United States Code, and that such willful false state-
ments may jeopardize the validity of the application or
any patent issuing thereon.

Date

(Signature of applicant or signa-
ture and registration number of
Registered Representative)
And

Date

(Signature of person mailing, if
other than the above)

The procedure for handling applications be-
coming abandoned due to late filing of a com-
munication having a conditional petition at-
tached thereto is as follows:

1\. Forward the papers and the application file
wrapper to the Office of the Deputy Assistant
Commissioner for Patents, Room 4-11E14.

2\. Do not mail a form POL-327 or forward
the file wrapper to the Abandoned File Unit.

3\. In the event that the application is revived,
the file wrapper will be returned to the forward-
ing group for further action.

711.03(d) Examiner's Statement on
Petition To Set Aside Ex-
aminer's Holding [R-23]

Rule 181 states that the examiner "may be
directed by the Commissioner to furnish a
written statement within a specified time set-
ting forth the reasons for his decision upon the
matters averred in the petition, supplying a
copy thereof to the petitioner". Often, how-
ever, the question is passed upon without a
statement being requested, if the issue raised
is clear from the record. Unless requested,
such a statement should not be prepared. See
§ 1002.01.

## 711.04 Disposition of Abandoned Ap- plications [R-23]

Extract from Rule 14. Abandoned applications may
be destroyed after twenty years from their filing date,
except those to which particular attention has been
called and which have been marked for preservation.
Abandoned applications will not be returned.

As explained in § 1302.07, a retention label is
used to indicate applications not to be de-
stroyed.

## 711.04(a) Pulling and Forwarding [R-23]

The files and drawings of abandoned applica-
tions are pulled and forwarded to the Aban-
doned Files Unit on a bi-weekly basis in ac-
cordance with the chart in Section 505.E(1) of
the Manual of Clerical Procedure.

They should be carefully scrutinized by the
appropriate examiner to verify that they are
actually abandoned. A check should be made
of files containing a decision of the Board of
Appeals for the presence of allowed claims to
avoid their being erroneously sent to the Aban-
doned Files Unit.

# 711.04(b) Ordering Abandoned Files [R-37]

Abandoned files may be ordered by examiners
by sending (through the messenger service) a
completed Form PO-125 to the Abandoned
Files Unit. The name and art unit should ap-
pear on the form and the file will be sent to him
through the messenger service.

Abandoned files more than ten years old
which have not been marked for permanent
retention are stored in a nearby Federal Rec-
ords Center. Orders for these old files require
at least two days for processing. The file should
be returned promptly when it is no longer
needed.

EXPEDITED SERVICE

Examiners may expedite service by ordering
abandoned files by telephone (Ext. 73181).

## 711.05 Letter of Abandonment Re- ceived After Application Is Allowed [R-42]

Receipt of a letter of abandonment while an
application is allowed, is acknowledged by the
Patent Issue Division.

An express abandonment arriving after the
issue fee has been paid and the patent to issue
has received its date and number will not be
accepted without a showing of one of the rea-
sons indicated in rule 313(b), or else a showing
under rule 183 justifying suspension of rule 313.

# 711.06 Abstracts, Abbreviatures and Defensive Publications [R-41]

## ABSTRACTS

Abstracts were prepared in accordance with
the Notice of January 25, 1949, 619 O.G. 258.
Each abstract includes a summary of the dis-
closure of the abandoned application, and in ap-
plications having drawings, a figure of the
drawing. The publication of such abstracts was
discontinued in 1953.

## ABBREVIATURES

Abbreviatures were prepared in accordance
with the procedure indicated in the Notice of
October 13, 1964, 808 O.G. 1. Each abbrevia-
ture contains a specific portion of the disclos-

ure of the abandoned application, preferably
a detailed representative claim, and, in applica-
tions having drawings, a figure of the drawing.
The publication of such abbreviatures was dis-
continued in 1965.

## DEFENSIVE PUBLICATIONS

Rule 139. Waiver of patent rights. An applicant may
waive his rights to an enforceable patent based on a
pending patent application by filing in the Patent Office
a written waiver of patent rights, a consent to the pub-
lication of an abstract, an authorization to open the
complete application to inspection by the general pub-
lic, and a declaration of abandonment signed by the
applicant and the assignee of record or by the attorney
or agent of record.

### A. Defensive Publication Program

An applicant may request to have an abstract
of the technical disclosure of his application
published as a defensive publication abstract
under rule 139. The request may be filed only
(1) while a pending application is awaiting the
first Office action in that application or (2)
within 8 months of the earliest effective U.S.
filing date if a first Office action has been issued
and responded to within said 8 month period.
The application is laid open for public inspec-
tion and the applicant provisionally abandons
the application, retaining his rights to an inter-
ference for a limited period of five years from
the earliest effective U.S. filing date.

The defensive publication of an application
precludes a continuing application (divisional.
continuation-in-part, or continuation) filed un-
der 35 U.S.C. 120 from being entitled to the
benefit of the filing date of the defensively pub-
lished application unless a continuing applica-
tion is filed within thirty (30) months after the
earliest effective U.S. filing date. Where a simi-
lar application is not filed until after expiration
of the thirty (30) month period, the application
is examined, but it may not claim the benefit of
the earlier filing date of the defensive publica-
tion application. The examiner should require
the cancellation of any claim or statement in-
tended to obtain the benefit of the earlier filing
date in such cases, objecting to its inclusion on
the ground of estoppel.

If a first continuing application is filed within
30 months from the earliest U.S. effective filing
date of the application published under the De-
fensive Publication Program, later copending
continuing applications (such as divisions if
restriction is required during the prosecution of
the first continuing application ) are not barred
and may be filed during the pendency of the
first continuing application, even though
beyond the 30 month period. without loss of the
right to claim the benefit of the filing date of the
Defensive Publication application.

The approval of a request for defensive pub-
lication is made by the Supervisory Primary
Examiner.

An application having therein a request for
defensive publication is taken up special by the
examiner, and if acceptable, the application is
processed promptly for publication of the
abstract and opening of the application to the
public. A request for defensive publication can-
not be withdrawn after it has been accepted by
the Office.

No fee is required for the defensive publica-
tion of an application.

The Defensive Publication Abstract and a
selected figure of the drawing, if any, are pub-
lished in the Official Gazette. Defensive Publica-
tion Search Copies, containing the defensive
publication abstract and suitable drawings, if
any, are provided for the application file, the
Public Search Room and the examiner's search
files.

The defensive publication application files
are maintained in the Record Room after
publication.

#### B. Requirements for a Statement Requesting Defensive Publication

An application may be considered for defen-
sive publication provided applicant files a
request under rule 139 agreeing to the condi-
tions for defensive publication. The statement
requesting publication should : (1) be signed by
the assignee of record, or by the attorney or
agent of record, or by the applicant and the as-
signee of record, if any; (2) request the Com-
missioner to publish an abstract of the disclosure
in the O.G .; (3) authorize the Commissioner to
lay open to public inspection the complete ap-
plication upon publication of the abstract in the
O.G .; (4) expressly abandon the application to
take effect 5 years from the earliest U.S. effec-
tive filing date of said application unless inter-
ference proceedings have been initiated within
that period; and (5) waive all rights to an en-
forceable patent based on said application as
well as on any continuing application filed more
than 30 months after the earliest effective U.S.
filing date of said application, unless the con-
tinuing application was copending with an
earlier continuing application which was filed
within 30 months after the earliest effective
U.S. filing date.

#### C. Requirements for Defensive Publication

The examiner should scan the disclosure of
the application to the extent necessary to deter-
mine whether it is suitable for publication and
he also should ascertain that the abstract and
the selected figure of the drawing, if any, ade-
quately reflect the technical disclosure. The ab-

stract should be entitled "Defensive Publication
Abstract" and may contain up to 200 words and
be an expanded version of the abstract required
under rule 72(b).

The request for defensive publication is disap-
proved if (1) there is some informality in the
application or drawings, (2) the requirements
of the statement requesting defensive publica-
tion as described in B above have not been met,
or (3) the subject matter of the application is
not considered suitable for publication because :
(a) it involves national security; (b) it is con-
sidered advertising, frivolous, scandalous, lack-
ing utility, or against public policy, etc., or (c)
the disclosure is clearly anticipated by readily
available art, and publication would not add
anything to the fund of public knowledge (mat-
ters of patentability are generally not consid-
ered and no search is made).

If there are defects in the request for de-
fensive publication which cannot be corrected
by Examiner's Amendment, they examiner
should notify applicant in writing, usually
giving the reasons for disapproval and indi-
cating how corrections may be made. Appli-
cant is given a period of one (1) month within
which to make the necessary corrections. Fail-
ure to correct a defect as required results in non-
acceptance for defensive publication, and in
resumption of the prosecution of the applica-
tion by the Office in its regular turn.

In those instances, however, where the sub-
ject matter is not suitable for publication, the
request may be disapproved without explana-
tion. Under these circumstances, the examiner's
letter is first submitted to the group director for
approval.

Petition may be taken to the Commissioner
from the disapproval of a request for defen-
sive publication.

Where the request is apparently fatally de-
fective and involves subject matter not con-
sidered suitable for publication, for example,
advertising, frivolous, lacking utility, etc., or is
clearly anticipated by readily available art,
the examiner should generally examine the
application and prepare a complete Office ac-
tion when notifying applicant.

### D. Formal Requirements of a Defensive Publication Application

Correction is required by the examiner of
informalities listed by the Application Division
and by the Draftsman before approval of the
request, for defensive publication. Informali-
ties of the drawing are listed on the Notice of
Informal Patent Drawings and defects of the
application are noted on the Notice of Informal
Patent Application. A letter notifying an ap-

plicant of the informalities in a request for de-
fensive publication should end with the follow-
ing paragraphs:

"The request for defensive publication has
not been approved in view of the noted infor-
malities. APPLICANT IS GIVEN ONE (1)
MONTH WITHIN WHICH TO MAKE THE
CORRECTIONS NECESSARY FOR PUB-
LICATION.

Failure to respond within the set period will
result in resumption of the prosecution of the
application in the normal manner."

Where the heading "Defensive Publication
Abstract" has been omitted, it is inserted by
a letter in the form of an Examiner's Amend-
ment, as are other corrections to the abstract.
The examiner has the authority to add to the
abstract reference numerals of the figure se-
lected for the O.G., and to designate a figure of
the drawing for printing in the O.G., or to
change the selection made by applicant by a let-
ter in the form of an Examiner's Amendment.

Informalities noted by the Draftsman on the
Notice of Informal Patent Drawings should be
corrected where appropriate and should be
handled as follows: The examiner notes in pen-
cil in the left margin of the drawing the num-
ber of the figure selected for defensive publica-
tion in the O.G. and returns the drawing with
the file to the Draftsman for further considera-
tion in view of the request under rule 139.
Although the selected figure itself must meet all
the drawing standards, the Draftsman may
waive requirements as to the remaining figures
which need be formal only to the extent of
being sufficiently clear for reproduction. The
Draftsman will note on the drawing and all
copies of the Notice of Informal Patent Draw-
ings "Approved for Defensive Publication
Only". (If the application is later passed to
issue, all drawing informalities must be cor-
rected). If the drawing correction requires
authority from the applicant, the examiner
notifies him in writing that the request under
rule 139 is disapproved until authorization for
correction is received.

### E. Preparation of an Application for Defensive Publication

After determining that the application is
acceptable for defensive publication the exam-
iner indicates which papers, if any, are to be
entered. Amendments accompanying the request
are not entered until approved by the examiner.
If filed after receipt of the request, amend-
ments will be placed in the file, but will not be
entered unless the subject matter of the amend-
ment is in response to a requirement by the
examiner.

The drawings of a published Defensive Pub-
lication may be transferred to a later applica-
tion drawn to the same invention filed within
30 months of the earliest effective U.S. filing
date of the Defensive Publication provided that
no alterations whatsoever are to be made in the
drawings. Applicant must submit a mounted
copy of the drawings to allow processing of the
application if transfer is contemplated.

The designated spaces on the face of the file
wrapper for class, subclass, claim for foreign
priority and prior United States application
data are appropriately completed.

The Defensive Publication Retention Label
identifies Defensive Publication Applications
only and is affixed by the examiner in the space
on the file wrapper reserved for the retention
label. Patent Issue Division completes the date
of publishing and O.G. citation of the Defensive
Publication Retention Label. nobundA SIT

In the spaces titled "Prep. for Issue" and
"Examined and Passed for Issue" the word
"Issue" is changed to "Def. Publ .-- by the ex-
aminer before signing. (The clerk's signature
is not necessary).

The "blue issue" slip is used on defensive
publication applications and is completed in the
usual manner except that in the space desig-
nated for the Patent Number the examiner
writes "Defensive Publication". Cross refer-
ences are designated only in those subclasses
where the examiner believes the subject matter
will be of significant interest to warrant it.

With respect to the drawings the procedure
is the same as for allowance and the examiner
fills in the appropriate spaces on the margin, in
the Draftsman's "Approved" stamp area.

#### F. Citation of Prior Art in a Defensive Publication Application

Since the defensive publication procedure
makes the disclosure of an application avail-
able to the public, usually before it or any con-
tinuing application is patented, citation of
prior art under rule 291 by any person or party
is accepted for consideration in the event ex-
amination is subsequently conducted. Such ci-
tation is endorsed on the file wrapper "Con-
tents" by the Record Room, for the convenience
of the examiner when preparing the applica-
tion or a continuing application of such an
application for allowance.

#### G. Defensive Publication Application Interferences

During the five year period from its earliest
U.S. effective filing date, interferences may
be declared between defensive publication ap-
plications and other applications and/or pat.

ents in accordance with existing interference
rules and procedures.

Examiners search the Defensive Publication
Search Copies in the regular patent search
files, when making patentability searchs. Where
the claims of a defensive publication applica-
tion recite substantially the same subject matter
as the allowed claims, the allowed claims should
be suggested for interference purposes to the
defensive publication application if these
claims would be allowable therein.

Abandonment of a defensive publication ap-
plication will be stayed during the period be-
ginning with the suggestion of claims or the
filing of claims copied from a patent and end-
ing with the termination of the interference
proceedings or the mailing of a decision re-
fusing the interference.

Termination of the interference in favor of
the defensive publication application would
render the express abandonment ineffective but
would not result in the issuance of an enforce-
able patent. The examiner cancels by exam-
iner's amendment all the claims in the case
except those awarded to applicant and sends the
case to issue. The Notice of Allowance in these
cases will be accompanied by a statement in-
forming the applicant that when the issue
fee is remitted, a disclaimer of the entire term
of the patent to be granted, must be included
in accordance with 35 U.S.C. 253.

Distinct numbers are assigned to all Defen-
sive Publications published after December 16,
1969, for example.

T
869
001-
Number series, 001-999 avail-
able monthly.

+-O.G. volume number,
\>-Document category, T for
Technical disclosure.

Defensive Publications are included in sub-
class lists and subscription orders. The distinct
numbers are used for all official reference and
document copy requirements.

A conversion table from the application
serial number to the distinct number for all
Defensive Publications published before De-
cember 16, 1969 appears at 869 O.G. 687. [R-41]

# 711.06 (a) Citation and Use of Ab- stracts, Abbreviatures and Defensive Publications as References [R-24]

It is important that abstracts, abbreviatures
and defensive publications (O.G. Defensive
Publication and Defensive Publication Search
Copy) be referred to as publications and not

as patents or applications. These printed pub-
lications are cited as prior art under 35 U.S.C.
102(a) or 102(b) effective from the date of
publication in the Official Gazette.

An application or portion thereof from which
an abstract, abbreviature or defensive publica-
tion has been prepared, in the sense that the
application is evidence of prior knowledge, may
be used as a reference under 35 U.S.C. 102(a),
effective from the actual date of filing in the
United States.

These publications may be used alone or in
combination with other prior art in rejecting
claims under 35 U.S.C. 102 and 103.

Abstracts, Abbreviatures and Defensive Pub-
lications are listed with Other References in the
citation thereof as follows:

(a) Abstracts and Abbreviatures

Brown, (abstract or abbreviature) of Serial
No.
filed
published
in
O.G.
on

(list classification).

(b) The O.G. defensive publication
Jones, Def. Pub. of Serial No.

filed
published in

O.G.
on
Defensive
Publication No. T -, -, (list classification).

(c) Search Copy defensive publication; ( where
a disclosure relied on is in the Search Copy
but not in the O.G. publication)

Jones, Def. Pub. Search Copy of Serial
No.
filed

pub-

lished in
O.G.
on
Defensive Publication No. T -, -- ,
(list classification).

(d) Applications or designated portions thereof
abstracts, abbreviatures and defensive pub-
lications

Jones, Application Serial No.
filed
laid open to public in-

as noted at
spection on
O.G.
(portion of appli-
cation relied on) (list classification).

## 712 Abandonment for Failure To Pay Issue Fee [R-24]

Rule 316. Application abandoned for failure to pay
issue fee. (a) If the fee specified in the notice of al-
lowance is not paid within three months from the date
of the notice the application will be regarded as aban-

713.01

doned. Such an abandoned application will not be
considered as pending before the Patent and Trade-
mark Office.

(b) The Commissioner may accept the late payment
of the fee specified in the notice of allowance later than
three months after the mailing of the notice as though
no abandonment had ever occurred if upon petition the
delay in payment is shown to have been unavoidable.
The petition to accept the delayed payment must be
accompanied by the issue fee or portion thereof speci-
fied in the notice of allowance, unless it has been pre-
viously submitted, the fee for delayed payment, and a
showing in the form of an oath or declaration as to
the causes of the delay.

Rule 317. Lapsed patents; delayed payment of balance
of issue fee.

(a) Any remaining balance of the issue fee is to be
paid within three months from the date of notice
thereof and, if not paid, the patent will lapse at the
termination of the three month period.

(b) The Commissioner may accept the late payment
of the balance of the issue fee after the three month
period as though no lapse had ever occurred if upon
petition the delay in payment is shown to have been
unavoidable. The petition to accept the delayed pay-
ment must be accompanied by the remaining balance
of the issue fee specified in the notice, unless it has
been previously submitted, the fee for delayed payment,
and a showing in the form of an oath or declaration
as to the causes of the delay.

Presentiy, the failure to pay the base issue fee
results in the abandonment of the application.
The failure to pay the balance issue fee results
in the lapse of the patent. When the three
months' period within which the base issue fee
might have been paid has expired, the file is
returned by the Patent Issue Division to the
examining group. Certain clerical operations
are performed and the file and drawing are for-
warded to the Abandoned Files Unit. When the
issue fee is not paid and the application is aban-
doned, proceedings are terminated as of the date
the issue fee was due. The application is aban-
doned on that date (but if the issue fee is later
accepted, on petition, the application is in a
sense revived). When the three month period
within which the balance issue fee might have
been paid has expired the file remains in the
Record Room. The term of the patent ends as of
the date the balance issue fee was due (but if
the balance issue fee is later accepted, the term
of the patent is reinstated.) It is possible to
petition the Commissioner to have an issue fee
accepted after the expiration of the three month
period. Such a petition must be supported by a
showing in the form of an oath or a rule 68
declaration as to the cause of the delay. and
accompanied by the proper issue fee (if not pre-
sented earlier). and the fee for late payment.

L. IR-461

### 713 Interviews [R-24]

The personal appearance of an applicant,
attorney, or agent before the examiner pre-
senting matters for the latter's consideration
is considered an interview.

### 713.01 General Policy, How Con- ducted [R-43]

Rule 133. Interviews. (a) Interviews with exam-
iners concerning applications and other matters pend-
ing before the Office must be had in the examiners'
rooms at such times, within office hours, as the respec-
tive examiners may designate. Interviews will not be
permitted at any other time or place without the
authority of the Commissioner. Interviews for the dis-
cussion of the patentability of pending applications
will not be had before the first official action thereon.
Interviews should be arranged for in advance.

(b) In every instance where reconsideration is re-
quested in view of an interview with an examiner, a
complete written statement of the reasons presented
at the interview as warranting favorable action must
be filed by the applicant. An interview does not remove
the necessity for response to Office actions as specified
in rules 111,135.

Interviews are permissible on any working
day except during periods of overtime work.

An interview should normally be arranged
for in advance, as by letter, telegram or phone
call, in order to insure that the primary exam-
iner and/or the examiner in charge of the ap-
plication will be present in the Office. When a
second art unit is involved (Patentability Re-
port). the availability of the second examiner
should also be checked. (See § 705.01 (f).) An
appointment for interview once arranged
should be kept. Many applicants and attorneys
plan trips to Washington in reliance upon such
appointments. When, after an appointment has
been made, circumstances compel the absence
of the examiner or examiners necessary to an
effective interview, the other party should be
notified immediately so that substitute arrange-
ments may be made.

When a telephone call is made to an examiner
and it becomes evident that a lengthy discussion
will ensue or that the examiner needs time to
restudy the situation, the call should be termi-
nated with an agreement that the examiner will
call back at a specified time. Such a call and all
other calls originated by the examiner should be
made through the FTS (Federal Telecommuni-
cations System) even though a collect call had
been authorized. It is helpful if amendments
and other papers, such as the letter of transmit-
tal, include the complete telephone number with
area code and extension, preferably near the
signature of the writer.

The unexpected appearance of an attorney
or applicant requesting an interview without
any previous notice to the examiner may well
justify his refusal of the interview at that time,
particularly in an involved case.

An examiner's suggestion of allowable sub-
ject matter may justify his indicating the possi-
bility of an interview to accelerate early agree-
ment on allowable claims.

An interview should be had only when the
nature of the case is such that the interview
could serve to develop and clarify specific is-
sues and lead to a mutual understanding be-
tween the examiner and the applicant, and
thereby advance the prosecution of the applica-
tion. Thus the attorney when presenting him-
self for an interview should be fully prepared
to discuss the issues raised in the Office action.
When it is obvious that the attorney is not so
prepared, an interview should not be permitted.

Examiners should avoid unnecessary inter-
ruptions during interviews with attorneys or
inventors. In this regard, examiners should
notify their receptionist, immediately prior to
an interview, to not complete incoming tele-
phone calls unless such are of an emergency
nature.

The examiner should not hesitate to state, if
such be the case, that claims presented for con-
sideration at the interview require further
search and study. Nor should the examiner
hesitate to conclude an interview when it ap-
pears that no common ground can be reached
nor when it becomes apparent that the appli-
cation requires further amendment or an addi-
tional action by the examiner.

It is the responsibility of both parties to the
interview to see that it is not extended beyond
a reasonable period, usually not longer than
thirty minutes. It is the duty of the primary
examiner to see that an interview is not ex-
tended beyond a reasonable period even when
he does not personally participate in the
interview.

During an interview with an applicant who
is prosecuting his own case and is not familiar
with Office procedure the examiner may make
suggestions that will advance the prosecution
of this case: this lies wholly within his discre-
tion. Too much time, however, should not be
allowed for such interviews.

Examiners may grant one interview after
final rejection. See § 713.09.

Where the response to a first complete action
includes a request for an interview or a tele-
phone consultation to be initiated by the exam-
iner, or where an out-of-town attorney under
similar circumstances requests that the exam-
iner defer taking any further action on the case
until the attorney's next visit to Washington

(provided such visit is not beyond the date
when the Office action would normally be
given), the examiner, as soon as he has consid-
ered the effect of the response, should grant
such request if it appears that the interview or
consultation would result in expediting the case
to a final action.

Where agreement is reached as a result of an
interview, applicant's representative should be
advised that an amendment pursuant to the
agreement should be promptly submitted. If
the amendment prepares the case for final ac-
tion, the examiner should take the case up as
special. If not, the case should await its turn.

Consideration of a filed amendment may be
had by hand delivery of a duplicate copy of said
amendment.

Early communication of the results of the
consideration should be made to applicant ; if
requested, indicate on attorney's copy any agree-
ment; initial and date both copies.

Although entry of amendatory matter usu-
ally requires actual presence of the original
paper, examiner and clerical processing should
proceed as far as practicable based on the dupli-
cate copy. The extent of processing will depend
on each amendment.

The substance of any interview, whether in
person or by telephone must be made of record
in the application. See § 713.04.

#### EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED THE INTERVIEW

Sometimes the examiner who conducted the
interview is transferred to another group or
resigns, and the examination is continued by
another examiner. If there is an indication
that an interview had been held, the second
examiner should ascertain if any agreements
were reached at the interview. Where condi-
tions permit, as in the absence of a clear error
or knowledge of other prior art, the second
examiner should take a position consistent
with the agreements previously reached. See
§ 812.01 for a statement of telephone practice in
restriction and election of species situations.

#### 713.02 Interviews Prior to First Offi- cial Action [R-46]

Prior to filing, no interview is permitted.
However, in the examiner's discretion, a lim-
ited amount of time may be spent in indicating
the field of search to an attorney, searcher or
inventor.

A request for an interview prior to the first.
Office action is ordinarily granted in continuing
or substitute applications. A request for an in-
terview in all other applications before the first

action is untimely and will not be acknowledged
if written, or granted if oral ; rule 133 (a).

SEARCHING IN GROUP

Search in the group art unit should be per-
mitted only with the consent of a primary
examiner.

##### EXPOUNDING PATENT LAW

The Patent and Trademark Office cannot act
as an expounder of the patent law, nor as a
counsellor for individuals.

###### 713.03 Interview for "Sounding Out" Examiner Not Permitted

Interviews that are solely for the purpose of
"sounding out" the examiner, as by a local at-
torney acting for an out-of-town attorney,
should not be permitted when it is apparent that
any agreement that would be reached is condi-
tional upon being satisfactory to the principal
attorney.

##### 713.04 Substance of Interview Must Be Made of Record [R-43]

A complete written statement as to the sub-
\> stance of any face-to-face or telephone inter-
view with regard to an application must be
made of record in the application, whether or
not an agreement with the examiner was
reached at the interview. See rule 133(b),
§ 713.01.

This is further brought out by the following
Rule :

₾

Rule 2. Business to be transacted in writing. All
business with the Patent and Trademark Office should
be transacted in writing. The personal attendance of
applicants or their attorneys or agents at the Patent
and Trademark Office is unnecessary. The action of the
Patent and Trademark Office will be based exclusively
on the written record in the Office. No attention will be
paid to any alleged oral promise, stipulation, or under-
standing in relation to which there is disagreement or
doubt.

The action of the Patent and Trademark
Office cannot be based exclusively on the written
record in the Office if that record is itself incom-
plete through the failure to record the substance
of interviews.

Applicants and their attorneys or agents are
responsible for compliance with the require-
ment for a complete written statement except
in those situations in which it is agreed that
the examiner will issue an Office action upon the
application without further written response on
behalf of applicant. In those situations. the ex-
aminer will make the substance of the interview

of record in the Office action. The examiner may
also complete the record of an interview if sig-
nificant matters are inadvertently omitted from
a written statement filed on behalf of applicant.

Noncompliance on behalf of applicant with
the above noted requirement for a complete
written statement when filing a response will
result in the applicant being given one month
from the date of the notifying letter or the re-
mainder of any period for response, whichever
is longer, to complete the response and there-
by avoid abandonment of the application (rule
135 (c) ).

##### EXAMINER TO CHECK FOR ACCURACY

Applicant's summary of what took place at
the interview should be carefully checked to
determine the accuracy of any statement at-
tributed to the examiner during the interview.
(a) If there is an inaccuracy and it bears di-
rectly on the question of patentability, it should
be pointed out in the next Office letter. If
the claims are allowable for other reasons of
record, the examiner should withhold allow-
ance by means of an Ex parte Quayle action
until the record is clarified. (b) If the inac-
curacy does not bear directly on the question
of patentability, the case may be sent to issue,
if allowable for reasons of record, but the ex-
aminer should send a letter setting forth his
version of the statement attributed to him.

An inaccuracy with respect to an argument
presented at the interview; e.g., including in
the summary of the interview an argument not
then presented, should be treated as in (a) or
(b) above.

#### 713.05 Interviews Prohibited or Granted, Special Situations [R-43]

Saturday interviews, see § 713.01.

Except in unusual situations, no interview is
permitted after the brief on appeal is filed or
after a case has been passed to issue.

An interview may be appropriate before ap-
plicant's first response when the examiner has
suggested that allowable subject matter is
present or where it will assist applicant in judg-
ing the propriety of continuing the prosecution.

Office employees are forbidden to hold either
oral or written communication with an unregis-
tered or a disbarred attorney regarding an ap-
plication unless it be one in which said attorney
is the applicant. See § 105.

Interviews are frequently requested by per-
sons whose credentials are of such informal
character that there is serious question as to
whether such persons are entitled to any infor-

mation under the provisions of rule 14. In gen-
eral, interviews are not granted to persons who
lack proper authority from the applicant or
attorney of record in the form of a paper on file
in the case or do not have in their possession a
copy of the application file. A MERE POWER
TÔ INSPECT IS NOT SUFFICIENT AU-
THORITY FOR GRANTING AN INTER-
VIEW INVOLVING THE MERITS OF
THE APPLICATION.

However, interviews may be granted to regis-
tered individuals who are known to be the local
representatives of the attorney in the case, even
though a power of attorney to them is not of
record in the particular application. When
prompt action is important an interview with
the local representative may be the only way
to save the application from abandonment.
(See § 408.)

If a registered individual seeking the inter-
view has in his possession a copy of the applica-
tion file, the examiner may accept his statement
that he is authorized to represent the applicant
under rule 34 or he is the person named as the
attorney of record.

Interviews normally should not be granted
unless the requesting party has authority to
bind the principal concerned.

The availability of personal interviews in the
"Conference Period", which is the time between
the filing of applicant's thorough first response
and a concluding action by the examiner, for
attorneys resident or frequently in Washington
is obvious. For others more remote, telephone
interviews may prove valuable. However, pres-
ent Office policy places great emphasis on tele-
phone interviews initiated by the examiner to
attorneys and agents of record. See § 408.

The examiner, by making a telephone call,
may be able to suggest minor, probably quickly
acceptable changes which would result in
allowance. If there are major questions or
suggestions, the call might state them concisely,
and suggest a further telephone or persona!
interview, at a prearranged later time, giving
applicant more time for consideration before
discussing the points raised.

For an interview with an examiner who does
not have negotiation authority, arrangements
should always include an examiner who does
have such authority, and who has familiarized
himself with the case, so that authoritative
agreement may be reached at the time of the
interview.

##### GROUPED INTERVIEWS

For attorneys remote from Washington who
prefer personal interviews, the grouped inter-
view practice is effective. If in any case there
is a prearranged interview, with agreement to

file a prompt supplemental amendment putting
the case as nearly as may be in condition for
concluding action, prompt filing of the supple-
mental amendment gives the case special status,
and brings it up for immediate special action.

##### 713.06 No Inter Partes Questions Dis- cussed Ex Parte [R-26]

The examiner may not discuss inter partes
questions ex parte with any of the interested
parties. For this reason, the telephone number
of the examiner should not be typed on deci-
sions on motions or any other interference
papers. See § 1111.01.

###### 713.07 Exposure of Other Cases [R-26]

Prior to an interview the examiner should
arrange his desk so that files, drawings and
other papers, except those necessary in the in-
terview, are placed out of view. See § 101.

###### 713.08 Demonstration, Exhibits, Models [R-26]

The invention in question may be exhibited
or demonstrated during the interview by a
model thereof which may be sent to the Office
prior to the interview where it is received in
the Supply and Receiving Unit and forwarded
to the group. A model is not to be received by
the examiner directly from the applicant or
his attorney. See §§ 608.03 and 608.03 (a).

Oftentimes a model or exhibit is not given
into the custody of the Office but is brought
directly into the group by the attorney solely
for inspection or demonstration during the
course of the interview. This is permissible.
Demonstrations of apparatus or exhibits too
large to be brought into the Office may be
viewed by the examiner outside of the Office,
(in the Washington area) with the approval of
the supervisory primary examiner. It is pre-
sumed that the witnessing of the demonstration
or the reviewing of the exhibit is actually essen-
tial in the developing and clarifying of the is-
sues involved in the application.

### 713.09 Finally Rejected Application [R-26]

Normally, one interview after final rejection
is permitted. However, the intended purpose
and content of the interview must be presented
briefly, either orally or in writing. With the
approval of the primary examiner, an inter-
view may be granted if the examiner is con-
vinced that disposal or clarification for appenl
may be accomplished with only nominal further
consideration. Interviews merely to restate
arguments of record or to discuss new limita-

tions which would require more than nominal
reconsideration or new search should be denied.
See § 714.13.

### 713.10 Interview Preceding Filing Amendment Under Rule 312 [R-26]

After a case is sent to issue, it is technically
no longer under the jurisdiction of the pri-
mary examiner, rule 312. An interview with
an examiner that would involve a detailed
consideration of claims sought to be entered
and perhaps entailing a discussion of the prior
art for determining whether or not the claims
are allowable should not be given. Obviously
an applicant is not entitled to a greater degree
of consideration in an amendment presented
informally than is given an applicant in the
consideration of an amendment when formally
presented, particularly since consideration of
an amendment filed under rule 312 cannot be
demanded as a matter of right. 802

Requests for interviews on cases already
passed to issue should be granted only with
specific approval of the group director upon
a showing in writing of extraordinary circum-
stances.

## 714. Amendments, Applicant's Action [R-26]

Rule 115. Amendment by applicant. The applicant
may amend before or after the first examination and
action, and also after the second or subsequent exam-
Ination or reconsideration as specified in rule 112 or
when and as specifically required by the examiner.